This year, 2019, marks my 30th year of involvement with the NYIPLA. My theme and goal as President is “outreach,” a word that summarizes what the Association has always aimed to do, and what I aim to do, with members, non-members who should be members, the community, the judiciary, the administrative agencies, policy makers and the legislature.
Take a moment to think about how much has happened in intellectual property law since 1989, when I attended my first Dinner in Honor of the Federal Judiciary (of many). Consider the following, which only touches upon the surface of the changes we have seen:
The U.S. implemented a change to an intent-to-use trademark filing system;
The U.S. signed on to the Madrid Protocol for international trademark filings;
The U.S. adopted one and then another federal trademark dilution law, after a Supreme Court decision narrowed the scope of the first law;
The U.S. adhered to the Berne Convention for the protection of copyright works, eliminating the requirement of copyright notice for protection;
The U.S. adopted the Digital Millennium Copyright Act, providing for notice and takedown procedures for online copyright infringements;
The U.S. adopted the America Invents Act, marking major changes in patent law including switching the U.S. patent system from “first to invent” to “first inventor to file”;
The U.S. adopted the Defend Trade Secrets Act, making trade secret theft subject to civil federal claims; and
The Supreme Court decided more significant intellectual property decisions than is possible to list here, touching upon copyright protection for clothing designs (Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ___ (2017)), patent protection for “abstract ideas” (Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)) and for “natural law” (Mayo Collab. Servces. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)) and trademark protection for product design (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000)), along with many decisions addressing procedural and equitable considerations having to do with attorney fee awards, entitlement to injunctive relief, when laches affects relief and how, proper venue, the preclusive effect of administrative proceedings, etc.
Not all the changes in the intellectual property world are without their critics. But a constant in the sea of change has been the “outreach” opportunities provided by the NYIPLA for members like me and you, permitting us to participate in the processes of debate, advocacy, policy development and implementation of change, via amicus briefs, legislative action work, continuing legal education programs and the like.
When I first got involved with the Association, I did not believe I had much – as a young trademark associate – to bring to the table and was not sure the Association was right for me. Back in the day, the NYIPLA was the NYPLA, with the “p” standing for “patent.” And, unless you are willing to count my Bachelor’s of Arts in Psychology, I do not qualify as a scientist. The Association soon acknowledged the importance of other intellectual property types when the name was changed to “IP” instead of just “P”. And I quickly learned that, at this Association, every member has something to contribute and every member has something to gain from participation. As a member here, I was not lost in a sea of tens of thousands but was among colleagues and friends gathered with the common goal of serving the purpose of the Association:
The Association is established to maintain the honor and dignity of intellectual property law, including patents, trademarks, copyrights and trade secrets; to promote the development and administration thereof; to advance the education of the members of the bar and the public in that field of law; and to cooperate with foreign associations in harmonizing the substance and interpretation of international conventions for the protection of intellectual property.
Initially, I contributed mostly just by showing up at events and meetings. Later, I offered a written case summary or two or a possible CLE topic. Eventually, I spoke at a CLE, chaired a committee and then served on the Board. Throughout, the opportunities for outreach of various types were tremendous and the more I showed up, the more I learned, the more valuable the lessons were, and the greater the opportunities were.
The events of this year alone demonstrate the dedication and commitment of our members in volunteering valuable time to serve the mission of the NYIPLA through “outreach.” Leading up to Labor Day, the NYIPLA Legislative Action Committee scheduled weekly calls to discuss the everchanging patent law reform bills presented in Congress and developed a series of Whitepapers addressing the aspects of certain proposals. The Trademark Law and Practice Committee presented a half-day CLE seminar touching upon a new Supreme Court case addressing trademark licenses in bankruptcy, the new Canadian trademark law, recent FTC actions, an update from the TTAB, the challenges in litigating against an incontestable registration for a mark that is believed to be generic, and ethics. Working with the Second Circuit, the Association developed the fact pattern for a moot court problem and provided an opportunity for eight summer associates from four firms to argue important and hotly debated patent issues before three judges, followed by a networking event during which the judges remained chatting with attendees well after the courthouse staff started turning off the lights. The Women’s Committee and Young Lawyers Committee both held summer social hours to foster connections among members and non-members alike.
Looking ahead into the fall, the Patent Litigation Committee is presenting a judges’ panel to discuss a “View from the Bench” on patent litigation issues, The Corporate Committee and Young Lawyers Committee are having a joint networking program and reception during which a panel of corporate counsel will discuss their paths to an in-house career. The Association will also present its popular One Day Patent CLE program in November. I am planning a President’s Forum addressing the issue of liability in the realm of online platforms. Undoubtedly, we will hear more from Congress when it is back in session with new patent reform proposals as well as continued debate on the copyright small claims act proposal. Several significant IP cases are pending at the Supreme Court.
The law is not static and the important work of the Association in the development of the law and policy will continue, with many pressing issues facing our clients, our administrative offices, our legislature, and our judiciary requiring open and frank communication among stakeholders and input from knowledgeable participants in the country’s intellectual property system like those in our membership.
In other words, there is plenty of “outreach” to be done and the Association would love your involvement and help. If you are already involved, thank you. If you are looking for ways to get involved, you can start the way we all did – by showing up. After all:
“Decisions are made by those who show up.”
Aaron Sorkin, Screenwriter
Please participate and ask your friends and colleagues to do the same. I hope to have an opportunity to say hello in person soon at an NYIPLA event near you. Meanwhile, don’t hesitate to reach out to me with your comments, ideas and suggestions. I welcome your outreach.
In This Issue:
NYIPLA President's Corner
When Does an Unsuccessful Petitioner Have Standing to Appeal an Adverse
The Price of the Patent Dance: Where Are All the Biosimilars?
Patent Machine Learning Inventions for Companies Outside the Software Industry
The Trading Technology Saga: When is an invention sufficiently "technical"?
Notable Trademark Decisions
NYIPLA Event Programming
Moving Up and Moving On
Welcome New Members
PAST PRESIDENTS' FORUM:
ONLINE PLATFORM LIABILITY
THURGOOD MARSHALL US COURTHOUSE
NYIPLEF 2ND ANNUAL DIVERSITY SCHOLARSHIP EVENT
PTAB'S USE OF DISCRETION TO DENY
INSTITUTION OF A PTAB PROCEEDING
AMSTER ROTHSTEIN & EBENSTEIN
When Does an Unsuccessful Petitioner Have Standing to Appeal an Adverse PTAB Decision?
By: Jessica blanton and heather schneider
Under the inter partes review (“IPR”) statute, any “person who is not the owner of a patent” may petition the Patent Office for inter partes review of the patent. See 35 U.S.C. § 311(a). There is no requirement that the petitioner have Article III standing, as “[p]arties that initiate [IPRs] need not have a concrete stake in the outcome; indeed, they may lack constitutional standing.” Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., 915 F.3d 764, 768 (Fed. Cir. 2019) (citing Cuozzo Speed Techs., LLC v. Lee, ––– U.S. ––––, 136 S. Ct. 2131, 2143–44, 195 L.Ed.2d 423 (2016)). However, standing requirements for appeals to the Federal Circuit can be much stricter, and thus an unsuccessful petitioner who would like to appeal an adverse IPR decision may not necessarily have standing in the Federal Circuit. This article provides an overview of the current landscape of Federal Circuit precedent on standing for IPR appeals, including the factors that the Federal Circuit uses to assess standing.
An Overview of the Standing Requirements
Standing requires an appellant to have “(1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1004 (Fed. Cir. 2018). The injury-in-fact must be “an injury that is both ‘concrete and particularized.’” Spokeo, Inc. v. Robins, ––– U.S. ––––, 136 S. Ct. 1540, 1545, 194 L.Ed.2d 635 (2016) (emphasis in original) (citation omitted). An appellant can establish standing by demonstrating “that its product creates a concrete and substantial risk of infringement or will likely lead to claims of infringement.” Google LLC v. Conversant Wireless Licensing S.A.R.L., 753 F. App'x. 890, 894 (Fed. Cir. 2018) (quoting JTEKT Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1221 (Fed. Cir. 2018) (internal quotations omitted)). “[A] petitioner who appeals from an IPR decision need not face ‘a specific threat of infringement litigation by the patentee’ to establish jurisdiction.” E.I. DuPont de Nemours & Co., 904 F.3d at 1004 (citing ABB Inc. v. Cooper Indus., LLC, 635 F.3d 1345, 1348 (Fed. Cir. 2011)). A petitioner must nonetheless show a controversy “of sufficient immediacy and reality” to warrant the requested judicial relief. Id. (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)).
An “appellant bears the burden of proving that it has standing” to seek judicial review. Amerigen Pharm. Ltd. v. UCB Pharma GmbH, 913 F.3d 1076, 1083 (Fed. Cir. 2019) (citing Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017)). In contrast, principles of standing are inapplicable to the appellee. See Pers. Audio, LLC v. Elec. Frontier Found., 867 F.3d 1246, 1249–50 (Fed. Cir. 2017), cert. denied, ––– U.S. ––––, 138 S. Ct. 1989, 201 L. Ed. 2d 249 (2018). This means that a successful petitioner can defend a PTAB decision on appeal without meeting Article III standing requirements, but an unsuccessful petitioner cannot appeal an adverse PTAB decision absent proof of standing.
“Concrete and Particularized” Injuries Are More Likely to Confer Standing
Generally, the more concrete and particularized an injury, the more likely standing will be found. Appellants that are currently marketing and selling products that are potentially subject to claims of patent infringement are more likely to have standing. For example, in Google LLC v. Conversant Wireless Licensing S.A.R.L., appellants were marketing and selling allegedly infringing products and had previously been sued on challenged patents. 753 F. App’x at 894. The patentee had withdrawn the suit, but it nevertheless refused to grant a covenant not to sue. Id. The court further noted that the appellants would potentially be estopped from making certain arguments should they be sued again in the future. Id. Based on these facts, the panel found the appellants had Article III standing to appeal the IPR decision. Id. Similarly, in PPG Indus., Inc. v. Valspar Sourcing, Inc., the challenged patent had not been asserted against the appellant at the time the appeal was filed, but the appellant had launched a potentially infringing product and had received an inquiry from a customer suggesting that the patentee would eventually assert the challenged patent. 679 F. App’x 1002, 1004–05 (Fed. Cir. 2017). Despite the lack of any specific threat of litigation at the time the appeal was filed, the panel found these facts established a particularized, concrete interest in the patentability of the subject matter sufficient to confer standing. Id. at 1005.
Concrete plans for future allegedly infringing activity may also be sufficient to confer standing. In E.I. DuPont De Nemours & Co. v. Synvina C.V., the appellant had not yet sold products made by the patented process and had never been sued on the patent at issue, but it was building and operating a plant that was allegedly capable of practicing an infringing process. 904 F.3d at 1004–1005. The panel found that plans to take actions that would implicate the challenged patent, including significant involvement in research and commercial activities involving the claimed subject matter of the patent, were sufficient to establish standing. Id. at 1005. The patentee’s refusal to grant the appellant a covenant not to sue further confirmed that the appellant’s risk of liability was not “conjectural” or “hypothetical.” Id.
In contrast, an appellant may not have standing when it lacks a finalized product capable of infringing the patent at issue. In JTEKT Corp. v. GKN Auto. Ltd., the appellant and patentee were competitors generally, but the appellant did not have finalized plans for its product and admitted that the product would “continue to evolve.” 898 F.3d at 1221, cert. denied 139 S. Ct. 2713 (2019). In that circumstance, the panel found that the appellant lacked standing to appeal. Id. In AVX Corp. v. Presidio Components, Inc., the appellant and patentee were also competitors generally, but the appellant lacked a product in “any stage of development that might implicate the upheld claims of the [patent at issue].” 923 F.3d 1357, 1365-66 (Fed. Cir. 2019). The panel found that the appellant lacked standing because it was not “undertaking or planning activity that gives it a concrete stake in obtaining an adjudication of unpatentability of the upheld claims . . . .” Id. at 1367. In Gen. Elec. Co. v. United Techs. Corp., GE, the appellant, argued that a patent on a gas engine airplane turbine limited the scope of its engine designs and its ability to compete in the highly regulated airplane industry. See 928 F.3d 1349, 1352 (Fed. Cir. 2019). The panel determined that GE lacked standing to appeal, finding that there was “no evidence that GE [was] in the process of designing an engine covered by [specific] claims . . . of the [patent at issue]” and no showing that GE had “definite plans to use the claimed features of the [patent at issue] in the airplane engine market.” Id. at 1355. On August 16, 2019, GE filed a petition for rehearing en banc, arguing that AVX was wrongly decided. See Gen. Elec. Co. v. United Techs. Corp., D.I. 90, Case No. 17–2497 (Fed. Cir. Aug. 16, 2019). GE argued that because AVX “adopted a patent-specific standing requirement inconsistent with Supreme Court precedent,” the panel “erred in applying AVX to hold that GE—UTC’s direct competitor—was required to quantify specific losses or show ‘definite plans’ implicating the claimed features of the [patent at issue] to establish standing.” Id. at 6. UTC responded on September 27, 2019, arguing that AVX is consistent with Supreme Court precedent, and that GE failed to prove any present or non-speculative injury-in-fact. Gen. Elec. Co. v. United Techs. Corp., D.I. 95, Case No. 17-2497 (Fed. Cir. Sept. 27, 2019).
Standing is less likely to be found where the appellant does not have a potentially infringing product or process, but challenges patents as part of its business model. In RPX Corp. v. ChanBond LLC, the appellant regularly challenged patents through the IPR process, stating that it garnered “reputational goodwill” based on the percentage of its successful IPR challenges. 2018 WL 9371458, at * 1 (Fed. Cir. Jan. 17, 2018), cert. denied, 139 S. Ct. 2713 (2019). The appellant argued standing based on alleged injury to its reputation, but the panel found that this was insufficient to demonstrate that it had suffered a “concrete and particularized reputational injury.” Id. at *3. Similarly, in Phigenix, Inc. v. ImmunoGen, Inc., the appellant developed an intellectual property portfolio that included a patent covering the subject matter claimed in the challenged patent. 845 F.3d at 1170. The appellant did not argue that it was at risk of “infringing the [challenged patent], [was not] an actual or prospective licensee . . . [and did not] otherwise plan to take any action that would implicate the patent,” and thus the appellant did not demonstrate that it suffered an economic injury. Id. at 1173–74. The panel found that the appellant lacked standing to appeal.
In the Pharmaceutical Context, the Stage of Development May Inform Standing Considerations
In the pharmaceutical context, the stage of product development may be relevant to standing considerations. Standing is more likely to be found where the appellant is further along in the regulatory process. For example, in Amerigen Pharms. Ltd. v. UCB Pharma GmbH, Amerigen argued that its Abbreviated New Drug Application (“ANDA”) had received tentative approval but was blocked by the challenged patent. 913 F.3d at 1082. UCB argued that there was no justiciable dispute because the challenged patent had previously been upheld in a separate district court suit, and thus the FDA would not approve Amerigen’s ANDA until the patent at issue expired. Id. Amerigen argued that an invalidity ruling would advance the launch of its product. Id. The panel agreed with Amerigen, finding that under these facts, Amerigen had a substantial, concrete stake in proving the invalidity of the challenged patent. Id. at 1083–85.
Standing may be shown even where the appellant has not filed an ANDA or abbreviated Biologics License Application (“aBLA”). For example, in Altaire Pharm., Inc. v. Paragon Bioteck, Inc., Paragon and Altaire had entered an agreement under which Paragon would pursue FDA approval for a drug developed by Altaire. 889 F.3d 1274, 1278 (Fed. Cir. 2018), vacated in part pursuant to settlement, 738 F. App’x 1017 (Fed. Cir. 2018). However, Paragon also filed a patent application covering the drug without Altaire’s consent or approval. Id. Altaire petitioned for post–grant review, arguing that the claims were obvious over certain drug lots that Altaire manufactured before the patent’s priority date. Id. at 1279. The PTAB instituted the PGR but found that Altaire failed to demonstrate obviousness. Id. at 1280. Altaire appealed, arguing it had standing because it intended to file an ANDA for the product once the agreement between the parties was terminated. Id. at 1282. Despite the fact that Altaire’s ANDA had not yet been filed, the majority found the filing was sufficiently immediate to establish standing. Id. Notably, Judge Schall dissented on the standing issue, arguing that because Altaire could not submit its ANDA until after the agreement terminated, the case lacked the requisite immediacy for standing. Id. at 1288–89. Judge Schall also noted that estoppel alone does not constitute an injury sufficient to give rise to standing. Id. at 1291.
However, the Federal Circuit denied standing to an appellant who had started, but since stopped, developing a product capable of infringement. In Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., BMS argued that Momenta did not have standing to appeal the PTAB’s decision because Momenta’s proposed biosimilar had failed its Phase I clinical trials and had since been withdrawn. 915 F.3d at 766. Momenta responded that it had not abandoned its biosimilar, that the challenged patent was an obstacle to its biosimilar, and that it is injured by the estoppel provisions of 35 U.S.C. § 315(e). Id. The Federal Circuit found that “[o]n abandoning development of this product, Momenta has no legally protected interest in the validity of the [challenged patent].” Id. at 768. The court further noted that in this case, estoppel cannot constitute an injury-in-fact when Momenta is no longer engaged in any activity that would give rise to a possible infringement suit. Id. at 769.
The Supreme Court Has Yet to Weigh in
RPX has petitioned the Supreme Court to review the Federal Circuit’s rule that an IPR petitioner appealing an IPR must establish some injury-in-fact to have Article III standing to appeal. RPX Corp. v. ChanBond LLC, Petition No. 17–1686 (June 18, 2018). RPX argued that, under 35 U.S.C. §§ 141 and 319, any party that is dissatisfied with the final written decision of the PTAB may appeal that decision. (JTEKT has also petitioned the Supreme Court to review the Federal Circuit’s decision using the same argument, JTEKT Corp. v. GKN Auto. Ltd., Petition No. 18–750 (December 7, 2018), but its petition was denied by the Supreme Court on June 17, 2019.) Although the Supreme Court invited the Solicitor General to file a brief in the RPX petition, and a number of amici, including the NYIPLA, have submitted briefs (see link), the Supreme Court denied the petition on June 17, 2019. Thus, until the Supreme Court weighs in, the Federal Circuit will continue developing law in this area.
To establish standing to appeal IPR decisions, an appellant must demonstrate that it has suffered an injury-in-fact. Thus far, the Federal Circuit has found standing to appeal IPR decisions in cases ranging from where the appellant was engaged in activity involving the patent subject matter to where the appellant suffered an injury because the listing of the patent delayed the launch of its competing product. The Federal Circuit has denied standing in cases ranging from where the appellant manufactured but had not finalized a product capable of infringement to where appellants only had a general grievance concerning the patent at issue. Future litigation and potential Supreme Court guidance may provide more insight into the factors that the Federal Circuit uses to assess standing to appeal IPR decisions.
In March of 2015, the United States Food and Drug Administration (“FDA”) approved the first biosimilar product for use in the United States. A biosimilar is a biologic pharmaceutical product that has been determined to be highly similar to an original reference biologic product. Biologic products can be used to treat a litany of chronic illnesses such as asthma, rheumatoid arthritis, and cancer. However, the high costs associated with producing these products create a barrier to market entry resulting in reduced availability and higher prices. While clinical trials, production costs, politics, and other factors influence the expense of these products, the costs associated with “pay for delay” settlements in patent litigation play a large role in driving prices upwards. In an effort to lower the price of biologics by increasing competition among biologic manufactures, Congress passed the Biologics Price Competition and Innovation Act (“BPCIA”) in 2010. Just as the Hatch-Waxman Act provides an abbreviated regularly pathway for generic small molecule drugs, the BPCIA provides a truncated approval process for biosimilar products. Unlike the Hatch-Waxman Act, the BPCIA has achieved limited success with only twenty-three biosimilar products receiving FDA approval since its enactment. The ineffectiveness of the BPCIA can be largely attributed to expansive and fiercely defended patent portfolios possessed by creators of biologic reference products. Initially developed to encourage the research and development of new technologies, the patent system was intended to benefit the public.
Pharmaceutical companies, however, have undermined this objective by investing in the protection of already patented drugs rather than in the development of new ones. The use of patents to prevent competitors from entering the market keeps the costs of healthcare high and reduces access to life-saving treatments. The development of biosimilars represents an enormous opportunity for the production of innovative new treatments for some of our society’s most devastating illnesses. Thus, if we are to take full advantage of recent biotechnological advancements, we should effectively foster competition and innovation among biologic and biosimilar manufacturers.
This Note explores the intersection of patent law and healthcare by evaluating the current scheme under which biosimilars are approved and examining its effectiveness in managing high pharmaceutical prices. Part I provides a brief overview of biologic and biosimilar products and their growing importance in the United States’ healthcare system. Part II outlines the BPCIA and how courts have interpreted this act in light of burgeoning technological developments. Part III will discuss regulatory and patent practices utilized by other countries. Part VI will aim to propose a more effective paradigm for use in the United States. This Note recognizes that there are many highly complex barriers working to prevent biosimilar entry into the market place,  however, it focuses on patent exclusivity, as this is a driving force used to exclude biosimilar competition and maintain high drug prices.
I. OVERVIEW OF BIOLOGICS AND BIOSIMILARS
A. Biologics vs. Biosimilars
Biologics are a class of pharmaceuticals composed of highly complex macromolecules, produced from living organisms. Using recombinant DNA technology, scientists engineer cells to produce specific macromolecules, which are used to develop life-saving drugs. Due to the complexity of the multistep processes that occur within the living organisms used to produce biologics, the resulting products vary in terms of chemical structure, purity, and immunogenicity. Though biologics can be reproduced with a high degree of similarity, the products are not chemically identical. Biosimilars differ from the generic versions of small molecule drugs, such as Aspirin, because generics contain the same active ingredient and are chemically identical or “bioequivalent” to the reference product. These man-made pharmaceuticals are produced using replicable chemical processes, which yield predictable results. The complexity of biologic therapies have allowed for rapid biotechnological advancements and present a wealth of potential for new innovation.
B. The Importance of Biologic Technology
With the creation of synthetic insulin, Eli Lilly revolutionized medicine with the first biologic drug. Through genetic engineering, researchers were able to produce human insulin, thereby removing both the risk associated with insulin produced from animals, as well as the limitations on the amount of product that could be produced. Advancements in biomedicine have led to the production of numerous biologic drugs ranging from vaccines to innovative new gene therapy treatments. Gleevec, a biologic produced by Novartis, treats chronic myeloid leukemia by targeting specific cancer proteins. Chronic myeloid leukemia is caused by a genetic mutation and over 5000 new cases are diagnosed in the US each year. By targeting specific proteins, Gleevec can stop the spread of cancer cells and is “almost ten times more effective than traditional interferon therapy.” Though Gleevec provides patients suffering from this devastating disease with a highly beneficial and much needed therapy, it comes at a cost. By charging over five thousand dollars per monthly treatment, when a biosimilar product can be purchased for as low as two hundred dollars per monthly dose, Novartis exploits its exclusive production rights. With global sales at an estimated $200 billion in 2016, the market for biologics continues to grow. Biologics, having an estimated $100 billion in annual sales, are expected to lose patent exclusivity by 2020 presenting a tremendous opportunity for biosimilar manufacturers. As a result, the development of biosimilars could greatly reduce the cost of health care in the United States, with savings of “approximately $54 billion over the next decade.”
II. THE IMPLEMENTATION AND INTERPRETATION OF THE BPCIA
A. The Patent Dance
The patent system engages in a noble pursuit for the public good by applying a uniform standard to all innovation. However, extrinsic factors create a perverse incentive for the makers of biologics to use the patent system against the public in order to maintain high profit margins. Pharmaceutical manufactures capitalize on the market for biologics through a process known as “evergreening.” Evergreening is used to maintain patent exclusivity, and therefore economic advantage, by making slight improvements or modifications to the drug and obtaining a new patent for these minor alterations. For instance, the pharmaceutical company AbbVie has maintained exclusivity over the right to sell Humira, a biologic used to treat autoimmune diseases, by securing more than a hundred patents on slight reformulations of the drug. Rather than expiring in 2016, AbbVie is not expected to lose its right to exclusivity until 2022 at the earliest. This strategy to extend a monopoly period is not unique to AbbVie. Studies have shown that 78% of all new drug patents are granted to pre-existing drugs The “new” drugs are often made just prior to the expiration of the patent for the original drug and the minor modifications provide little clinical advantage. It has been said that these evergreening pharmaceuticals are “created primarily to help bottom lines rather than patients.” While patents can be challenged through litigation or post-grant proceedings, the high number of patents possessed by the owners, the aggressive enforcement of these patents, and the high costs associated with challenging a patent dissuade many would-be biosimilar makers from attempting to make potentially infringing products.
The United States’ free market economy is at odds with the patent system in that patent exclusivity is designed to reward innovation, while the United States’ pricing scheme for pharmaceuticals functions best when there are competitive forces at play. Patent exclusivity is designed to reward innovation, while the United States’ pricing scheme for pharmaceuticals functions best when there are competitive forces at play. Congress has recognized the fact that the introduction of biosimilars into the marketplace would increase competition, thereby lowering prices. The passage of the BPCIA in 2010, as part of President Obama’s healthcare reform initiative, was intended to remove the barriers preventing biosimilars from entering the market and to encourage competition. Thus providing incentives for pharmaceutical companies to develop new biologic and biosimilar drugs and balancing the interests of biologic and biosimilar makers. For example, the BPCIA incentivize biologic manufactures by allowing a 12-year period of exclusivity, meaning that biosimilar products cannot be marketed during this 12-year period despite receiving FDA approval. This period of exclusivity provision guarantees biologic makers 12 years to recoup their investment, theoretically incentivizing them to develop new products rather than spend time and resources attempting to gain a few additional years of protection by modifying existing drugs. By providing an abbreviated approval pathway for biosimilar drugs in addition to a “carefully calibrated scheme for preparing to adjudicate, and then adjudicating, claims of infringement,” the BPCIA aimed to make biosimilar products more readily available to the public. This act was designed to mirror the Hatch-Waxman Act, which similarly fostered the development of generic drugs by balancing the interests of competing parties and resulted in over 80% of today’s prescriptions being generic. With the passage of the BPCIA, biosimilar production was expected to boom, however, with only twenty-three biosimilar products approved, the anticipated level of success has fallen dramatically short. Colloquially known as “the patent dance,” the BPCIA has not resulted in the increased competition or price reductions seen in other nations where biosimilar products have been made available. Its lack of success has been attributed to the complex and enigmatic nature of the BPCIA. The submission of a biosimilar application to the FDA under the BPCIA results in a series of disclosures, including the exchange of technical development information, patents to be asserted, and infringement and validity disputes between the biosimilar applicant and the manufacture of the reference product. Each of these exchanges is required to occur in accordance with “strict timing and sequencing requirements.” This process treats a biosimilar application as “an artificial act of infringement” and allows the makers of the reference product to bring an infringement action against the biosimilar maker prior to a “traditional act of patent infringement.” In Sandoz v. Amgen, Sandoz tested the rigidity of the BPCIA requirements by refusing to provide Amgen with a copy of its application for FDA approval of its biosimilar product Zarxio. Zarxio is biosimilar to Amgen’s reference product Neupogen, which is used to increase white blood cell count in cancer patients, thereby reducing their risk of infection. Following Sandoz’s refusal to disclose further information about Zarxio, Amgen immediately sued for patent infringement and alleged that by failing to comply with the BPCIA, Sandoz was in violation of California’s unfair competition law. After moving up through the courts, the Supreme Court ultimately held, in June of 2017, that the BPCIA is not enforceable by injunction under federal law. Additionally, the unanimous court concluded that biosimilar manufacturers “may” rather than “must” provide a 180 day notice of commercial marketing of the biosimilar drug before the product is licensed. This ruling, was followed by a recent federal court decision holding that the Supreme Court’s decision preempts any state law claims that are founded upon a biosimilar maker’s refusal to engage in the patent dance. Taken together, these decisions preventing injunction and any state law remedies reduce the strictness of the BPCIA and place power in the hands of biosimilar manufacturers. Because biosimilar makers can determine whether or not to follow the provisions of the BPCIA, they are also able to decide when and how they wish to litigate. Companies now must strategize by evaluating the legal and economic landscape for each biosimilar drug and determine whether they will exercise the option to engage in the patent dance, inter partes or post-grant review, declaratory judgment actions, or simply wait for the makers of the reference product to initiate litigation.
The BPCIA does provide a significant amount of control to the biosimilar makers, as it allows them to choose which patents can be asserted and limits the number of patents asserted against them. However, rather than streamlining the approval process and reducing litigation costs, the BPCIA has muddied the waters by allowing biosimilar manufacturers to select which aspects of the default system to follow. With the patent dance taking up to 230 days before commencing litigation, it has proven to be a largely ineffective tool for expeditiously bringing biosimilar drugs to market. Though some have predicted that biosimilar makers will continue to follow the patent dance paradigm, post-grant proceedings have risen for biosimilar products. These proceedings generally provide a faster and less costly alternative to litigation.
Inter partes review offers advantages such as no standing requirement, no presumption of validity, broad claim construction, and a lower burden of proof for challenging patents.  These standards make it easier to invalidate patent claims and may allow biosimilar makers to forge a path to market. Though inter partes review challenges involving biologic products frequently occur before district court litigation, it is not likely that these proceedings will allow biosimilars to avoid litigation entirely. With the Patent Trial and Appeal Board denying “a high percentage” of inter partes review petitions, many of these disputes are ultimately litigated in district court. Further, biosimilar makers must thoroughly consider their strategy prior to bringing an inter partes review, as they may later be estopped from bringing claims considered in the proceeding during litigation.
III. BIOSIMILARS IN THE INTERNATIONAL COMMUNITY
Because the BPCIA and post-grant proceedings provide little protection from lengthy and expensive patent litigation, the United States, unlike other countries, has failed to reap the benefits of biosimilar products. With 58 biosimilar products approved since 2006, the European Union is leading the world in biosimilar product usage and is “amassing considerable experience of their use and safety.” With biosimilar products priced at approximately 30 percent lower than the reference products, the EU has been able to save a significant amount on healthcare costs. The U.S. approval of ZARXIO® in 2015 highlights our nation’s idle approach to biosimilar approval when compared to the EU’s approval of nine filgrastim products since 2008. The regulatory system for biosimilar products is highly similar in the EU and in the U.S., however, the European Commission encourages the development of biosimilar products through an efficient approval process and continuous regulatory agency improvement and involvement. Furthermore, public education and acceptance of biosimilars has played a vital role in the rapid uptake of biosimilar pharmaceuticals by consumers.
India has taken an alternative approach to reduce drug prices by increasing the standards for patenting pharmaceuticals. Rather than allow pharmaceutical makers to utilize patents to prevent consumer access and elevate prices, India has adopted a system in which “the [Indian Patents] Act has taken into consideration the country’s socio-economic, developmental, technological, and public interest needs. Thanks to the Indian Patents Act ... the prices of drugs ... are reasonable and this has benefited the consumer at large.” India complies with the World Trade Organization’s Trade-Related Aspects of Intellectual Property Rights Agreement;  however, it has interpreted the Agreement to allow protection for only truly novel pharmaceuticals. Though the country’s high standard for patentability have led some to worry that its system lacks the proper reverence for the intellectual property rights of pharmaceutical companies,  it has allowed India to develop one of the largest pharmaceutical industries in the world. While the United States’ pharmaceutical industry remains stagnant and expensive, India has eradicated the issue of evergreening. As a result, biosimilars have entered the market, reducing drug prices and benefiting the public.
IV. A BALANCED SOLUTION
A. Balancing IP Rights With Innovation By Raising Standards of Patentability
For nearly a decade, the United States has struggled to increase competition between biologics and biosimilars in order to reduce the price of medicine and bring about new innovation through an overly convoluted Act. Though recent court decisions have brought some clarity to the BPCIA, it is evident that the patent dance is an ineffective tool for implementing change in the pharmaceutical industry. If we are to maximize the benefits of biotechnological advancements with respect to pharmaceuticals, we must develop a system that encourages companies to develop new products, while maintaining a heathy and competitive market, in place of one in which “money is being wasted on new forms of old drugs.” Rather than allow biologic manufacturers complete freedom to determine drug prices under the guise of patent rights, we must adapt our system in order to balance intellectual property rights with the medical needs of our community.
Though the BPCIA attempts to shift control to biosimilar makers by allowing them to determine when and how to litigate, it has failed to remedy the high costs of pharmaceuticals because its lengthy path for biosimilars to reach the market has not reduced litigation costs. Further, the BPCIA fails to address the core issue, which is the huge number of superfluous patents on pre-existing drugs blockading biosimilars from reaching the market. The lack of innovation seen in the United States’ pharmaceutical industry has demonstrated that the BPCIA, on its own, is not enough to make life-saving medications accessible to the public. However, heightened standards on the patentability of pharmaceuticals, in conjunction with the abbreviated pathway and control afforded by the BPCIA to biosimilar makers may be sufficient to break down the barricade.
To ensure that the patent system works to stimulate research and development, patents on pharmaceuticals should be subject to heightened scrutiny. The rise in healthcare costs is not because of an inherent flaw in the patent system, but instead, it is due to the ways in which the makers of biologics obtain and use patent rights. As some have noted, the pharmaceutical industry has been “privileged” with a more lenient novelty bar than most other industries. By increasing the standards for patentability, through either legislation or court interpretation, it can be assured that patents are granted only for changes which increase the drug’s efficacy or benefit the user. Adjusting the standards of patentability in this manner would not only preserve the rights of pharmaceutical companies by continuing to allow patents for novel, useful, and non-obvious medications, but also would remain consistent with recent interpretations of the eligible subject matter doctrine. For example, the Supreme Court in Ass’n For Molecular Pathology v. Myriad Genetics, Inc. has limited the patentability of biomedical findings for fear of stifling research that could lead to cures. Additionally, the Supreme Court has limited the patentability of software such that patents are granted only to software that is novel, non-obvious, and “tied to a machine,” greatly reducing the number of software and business method patents issued. Courts should use caution, however, not to over-restrict the patentability of biologics as this could result in negative consequences as well. Moving too far in the opposite direction could not only subvert intellectual property rights, but also discourage innovation if drug companies are not able to recoup the costs of their significant investments. Incentives from the BPCIA such as the 12-year exclusivity period, however, would likely work in concert with a heightened novelty requirement to encourage new biologic development.
By removing the pharmaceutical companies’ ability to repeatedly patent existing drugs, biosimilar makers will be able to use the BPCIA’s abbreviated pathway to effectively bring biosimilars to market. In order to maximize effectiveness, it is important that this shift in the standard for subject matter patentability works in conjunction with policy efforts to educate the public about the significance of biosimilar products. By increasing awareness and garnering public support for biosimilar products, the lag between the time it takes for the products to reach the market and public acceptance can be minimized. Rapid acceptance is necessary if the United States is to catch up with other countries which are already occupying the biosimilar market space.
While other solutions for increasing competition among biologics and biosimilars, such as additional FDA regulations further streamlining the biosimilar approval process, may be useful in the short term, they do not address the root issue. Until pharmaceutical companies are prevented from using patents against the public for pure financial gain, we will likely not see the health benefits, reduced healthcare costs, or biotechnological innovation of which our nation is capable. The United States must act swiftly if it is to maintain its status as a world leader in the pharmaceutical industry and healthcare.
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 Ravinder Gabble & Jillian Clare Kohler, To Patent or Not to Patent? The Case of Novartis’ Cancer Drug Glivec in India, 10:3 GLOBALIZATION AND HEALTH 1, 3 (2014).
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 Roger Collier, Drug Patents: The Evergreening Problem, 185(9) CMAJ 385, 385 (2013).
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 Roger Collier, Drug Patents: The Evergreening Problem, 185(9) CMAJ 385, 385 (2013).
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 Louis E. Fogel & Peter H. Hanna, The Biosimilar Regulatory Pathway and the Patent Dance, JENNER & BLOCK (December 2014); Posinelli, Biosimilars: Strategic Considerations for 2018, JD SUPRA (Dec. 27, 2018), https://www.jdsupra.com/legalnews/biosimilars-strategic
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 Posinelli, Biosimilars: Strategic Considerations for 2018, JD SUPRA (Dec. 27, 2018) https://www.polsinelli.com/
 Jackie Syrop, The Uncertainty of BPCIA Litigation Strategies and the “Patent Dance,” CENTER FOR BIOSIMILARS (May 1, 2017), http://www.centerforbiosimilars.com
 Nathan-Monroe Yavneh & Irena Royzman, New Biosimilar Litigation Reflects Benefits of Complying with BPCIA, BIOLOGICS BLOG (Aug. 4, 2017), https://www.biologicsblog.com/
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 Irena Royzman & Zhiqiang Liu, Mixed Results as IPR Petitions for Biosimilars Soar, BLOOMBERG (Dec. 6, 2017), https://www.pbwt.com/content/uploads/2017/12/BNA_Mixed
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 Tania A. Shapiro-Barr & Reed R. Heimbecher, Biosimilars: Poised to Turn to Inter Partes Review to Resolve Disputes, CORPORATE COUNSEL BUSINESS JOURNAL (Jun. 1, 2015), http://ccbjoumal.com/ articles/32490/biosimilars-poised-tum-inter-partes-review-
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 Roger Collier, Drug Patents: The Evergreening Problem, 185(9) CMAJ 385 (2013).
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 Ass’n For Molecualr Pathology v. Myriad Genetics, Inc., 569 U.S. 576, (2013).
 Software Patents, IPWATCHDOG (Feb. 17, 2018), http://www.ipwatchdog.com/software-patents/; Jim Singer, Patent-eligibility After Alice: A Summary of Decisions That Found Software Inventions Eligible for Patenting, IP Spotlight (Nov. 25, 2014), https://ipspotlight.com/2014/11/25/patent
 Ass’n For Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, (2013) (“As we have recognized before, patent protection strikes a delicate balance between creating ‘incentives that lead to creation, invention, and discovery’ and ‘imped[ing] the flow of information that might permit, indeed spur, invention.”‘) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)).
 Vinita Banthia, Note, Biosimilar Regulation: Brining the United States Up t; Speed With Other Markets, 16 MINN. J.L. Ser. & TECH. 879, 916 (2015); Erwin A. Blackstone & Joseph P. Fuhr, Jr., The Future of Competition in the Biologics Market, 31 TEMP. J. Ser. TECH. & ENVTL. L. 1, 29 (2012).
 Rolando Y. Wee, Biggest Pharmaceutical Markets in the World By Country, World Atlas (Apr. 25, 2017), https://www.worldatlas.com/articles/countries-with-the-
The Price of the Patent Dance:
Where Are All the Biosimilars?
By: kelsie kelly
First Place $1,500.00
The competition is open to students enrolled in a J.D. or LL.M. program (day or evening). Any entry must be directed to any of the following subject areas of intellectual property, i.e., patents, trademarks, copyrights, trade secrets, unfair trade practices, antitrust, and data security/privacy issues. Entries must be submitted electronically by February 28, 2020, to the address provided below. See Rules for details on submission requirements.
Richard H. Brown, Co-Chair
NYIPLA Conner Writing Competition
Day Pitney LLP
7 Times Square
New York, NY 10036
William C. Conner
Intellectual Property Law
February 28, 2020
Awards are presented on May 12, 2020 at the Princeton Club of New York during the
NYIPA Annual Meeting.
The use and development of artificial intelligence and machine-learning technology is spreading from niche Silicon Valley software companies to almost all innovative businesses, including those outside the traditional software field. Stitch Fix CEO Katrina Lake recently said: “In 10 years, every ‘relevant’ company will be a tech company.” As such, a strategy for inventing and using machine-learning technology, and for generating IP based on the inventions, is essential to non-software companies.
While some large software companies have been patenting artificial intelligence-related technologies for over a decade, non-software companies might be new to patenting these types of inventions. This paper is intended to assist private patent practitioners, as well as in-house attorneys, in understanding the machine-learning technology space, developing processes for identifying patentable inventions in the machine-learning field, and patenting such inventions. This paper provides an overview of some commonly-used artificial intelligence and machine-learning technologies, and discusses how these technologies might be used or patented by companies outside the software industry.
Technology Overview of Artificial Intelligence and Machine Learning
“Artificial intelligence” is a subfield of computer science that gives a computer the ability to mimic “cognitive” functions typically associated with a human or animal mind, such as “learning” or “problem solving.” Machine learning is a subfield of artificial intelligence that focuses on learning, as opposed to a programmatic rule-based system that is able to appear “intelligent.” In the second decade of the twenty-first century, more and more artificial intelligence implementations appeared in various fields, including the healthcare, automotive, finance and economics, government, video games, military, audit, advertising, and art sectors. As a result, an understanding of this computer science subfield is important not only to programmers, but also to business leaders, their legal advisors, and even participants in politics and popular culture. Within the legal industry, an understanding of basic artificial intelligence principles is necessary not only for software patent attorneys who encounter the field every day, but also to patent attorneys in other fields and to in-house attorneys that advise companies on patent and technology-related issues.
Definition of Machine Learning
Machine learning is a subfield of computer science that gives a computer the ability to “learn” to perform a task which it was not explicitly programmed to do. Traditionally, a computer was programmed with explicit instructions and the computer would then perform operations based on those specific instructions. For example, a traditional (pre-machine learning) computer could be programmed to convert a temperature from degrees Fahrenheit to degrees Celsius by receiving an input temperature in degrees Fahrenheit, applying a mathematical formula provided by the programmer (i.e. C = (F – 32) * (5/9), where C is the temperature in degrees Celsius and F is the temperature in degrees Fahrenheit), and providing an output temperature in degrees Celsius.
Machine learning greatly broadens the scope of problems that computers can solve. Previously, computers could solve problems for which the programmer could explicitly express the solution using mathematics or logic, for example, applying a mathematical formula, identifying a simple single-colored rectangle in an image, computing the best chess move using a set of logical rules, and the like. Machine-learning technology allows computers to solve problems to which humans do not know how to articulate solutions using mathematics or logic. For example, computers implementing machine-learning technology have been used to detect spam email messages, detect network intruders, identify faces in images, identify animals or objects in images, and drive a vehicle. For each of these problems, articulating rules or logic (which can be translated into computer instructions) to solve the problem is far from trivial.
Typically, machine-learning algorithms rely on a collection of examples of some phenomenon (e.g., examples of spam and non-spam email messages). The examples may be taken from real-life scenarios. Alternatively, the examples may be generated by a human or by another algorithm.
In some cases, machine-learning technology solves a given problem by (1) obtaining a training dataset, and (2) generating a model (e.g., a statistical or other mathematically or locally expressed model) based on the training dataset. The model may solve the given problem without requiring the programmer to provide explicit instructions about how the problem is to be solved. The terms of art “training” and “inference” are frequently applied in the machine-learning context. “Training” refers to a computer generating the model based on the training dataset. “Inference” refers to the computer using that model to solve the problem using data from outside the training dataset. For example, a machine-learned spam filter may, in the training phase, generate, based on a training dataset of labeled spam and not spam email messages, a model that identifies email messages as “spam” or “not spam.” In the inference phase, the spam filter receives a new message (e.g., which has just been delivered to an email inbox) and, using the generated model, identifies the new message as either “spam” or “not spam.”
It should be noted that machines do not “learn” in the same way that humans or animals learn. Instead, a machine-learning algorithm generates a model that, when applied to the training data, correctly solves the given problem. The generated model then can (hopefully) correctly solve the given problem for inference data, which is different from the training data. However, a precondition is that the inference data is similar to the training data in terms of the criteria used by the model. For instance, a model trained to recognize faces (i.e., to determine whether two different photographs, taken at different times/places, are of the same person) on a training dataset of Caucasian Americans might perform poorly when tasked with identifying African American faces. However, a human child who knows how to recognize faces and has only seen Caucasian Americans would likely be able to recognize two different photographs of the same African American person as being of the same person, and to recognize photographs of different African Americans as being of different people.
Several commonly used types of machine learning include supervised learning, unsupervised learning, semi-supervised learning, reinforcement learning, and artificial neural networks. These technologies can be used to solve many different problems faced by businesses in the software industry and businesses outside the software industry.
Uses of Machine-Learning Technology by Companies Outside the Software Industry
Atomwise, a biochemical discovery startup in San Francisco, is one example of a company outside the software industry that uses machine-learning technology. Atomwise deployed a deep learning machine, AtomNet, to tackle key real-world issues in improving pesticides. Deep learning allowed Atomwise researchers to simulate millions of compound and identify the ones that target pests without causing toxicity in humans or other friendly species. Using traditional research methods, simulating millions of compound would be impractical. This approach has allowed Atomwise to produce less harmful pesticide products faster than its competitors.
One big benefit of machine-learning technology is faster iteration. Samples can be generated and tested much more quickly by machines than by humans. Scott Adams, creator of Dilbert, tried many different cartoons before he developed Dilbert and became successful through it. The iteration process took Adams many years; however, a machine-learning algorithm that generates cartoons can do this much more quickly. Similarly, in the technology space, faster iterations allowed Atomwise to develop pesticides much more quickly than its competitors who used traditional schemes.
Not surprisingly, there is a strong upward trend in patent application filings for machine-learning technology, which will likely continue into the future. Patentable inventions may include: (1) new approaches to solving problems in the company’s line of business by using machine-learning technology or (2) new machine-learning technologies themselves.
New Approaches to Problem Solving
The patentability of new approaches to problem solving in a non-software company’s line of business may be based on Diamond v. Diehr. At issue in Diamond v. Diehr was the validity of U.S. Patent No. 4,344,142, titled “Direct digital control of rubber molding presses,” and issued to James R. Diehr, II, of Troy, Michigan. The Supreme Court held that controlling the execution of a physical process by running a computer program did not preclude patentability of the invention as a whole. The novelty of the invention could lie either in the computer program or in the physical process itself.
Importantly, the Diehr patent is not a machine-learning invention. In fact, it relates to “ancient” computer technology – having been filed in 1975 and issued in 1982. This invention is not machine learning. Rather, it leverages a simple 1970s computer being preprogrammed with instructions. However, in the Diehr patent, the computer gathers data from data storage and the environment (temperature of a mold for rubber products) and makes decisions based on this data using preprogrammed rules. This was sufficient for a patentable invention according to the court in Diamond v. Diehr. Replacing preprogrammed rules with a trained neural network (and a description of the training process) might yield a machine-learning invention that is clearly patentable under the rules expressed by the Supreme Court in Diamond v. Diehr.
Examples of technologies that could be patent eligible based on the Diamond v. Diehr precedent include using a trained neural network to control fabrication of a chemical (e.g., rubber, glass, detergent, etc.) or using a trained neural network to control development of a biological or biomedical compound (e.g., a drug, a vaccine, an artificial limb, an artificial organ, lab-grown meat, etc.). These inventions may have easily resolvable (if any) hurdles under 35 U.S.C. § 101.
For example U.S. Patent No. 8,478,535, issued to Nebojsa Jojic of Redmond, WA, and originally assigned to Microsoft Corporation, is titled, “Systems and Methods That Utilize Machine-Learning Algorithms to Facilitate Assembly of AIDS Vaccine Cocktails.” The machine-learning techniques are used “to generate vaccine cocktails for species of pathogens that evolve quickly under immune pressure of the host.”
New Machine-Learning Technologies
Non-software companies may seek patents for new machine-learning technologies that their employees invent. Different problems may require different machine-learning technologies to solve them. Typically, when faced with a new machine-learning problem, software companies attempt to recycle preexisting technologies to solve them. For example, if the problem is cat facial recognition, the solution could be re-training a human facial recognition model on cat faces. However, this approach might not always work. For example, replacing human faces with cat faces might work. However, replacing human faces with complex chemicals might be more difficult. Changes that could be made may include one or more of: (1) a new feature vector or new data studied by the neural network, new training datasets, and a new neural network structure. For new machine-learning technologies, patentability may be based on advances in the field of computer science itself, rather than the use of a computer to solve a problem in another field. For example, the technology may relate to a new neural network, rather than using a previously-existing neural network to control a process of curing rubber.
It should be noted that some technologies, such as primarily mathematical algorithms or non-technological business algorithms that do not impact anything outside the computer, might not be patent eligible. Examples of such technologies include techniques for hedging investment risk, and computations done inside a computer that do not have a real-world impact and are not tied to the functionality of the computer (e.g., graphics processing unit (GPU), memory structure, data structures, and the like). For these technologies, the inventors’ companies may wish to consider a defensive publication to prevent competitors from getting a patent if the law changes.
To ensure enforceability, non-software companies might draft claims with infringement detection in mind. For example, if possible, the claim should clearly state the input and output of any algorithm and, to the degree possible, avoid focusing on the “black box” of the internal workings of the technology.
The specification should apply the claimed technology to a real-world use case. To overcome potential rejections, the specification should disclose as many technical details as possible about inventive technology. The specification should explain not only which computations are done, but how they are done, in as much granularity as possible. For example, the specification may focus on which data structures and hardware elements are used and how the data structures or hardware elements interact with one another to perform the invention. The specification should illustrate why the invention is better than existing solutions or new solutions that a competitor could invent. The specification should show that the invention is a technical solution to a problem that is technical in nature.
Validity Under 35 U.S.C. § 101
In issuing (or accepting arguments to overcome) § 101 rejections, Examiners typically want to see how the technology is tied to the real world, as technologies that are “real” are not “abstract.” Is the invention simply doing calculations within a computer or do those calculations have a real world impact outside the computer? Non-software companies that develop machine-learning technologies for real-world industrial applications, rather than for some potential, not yet defined applications, have a strong advantage here. The USPTO guidance of January 7, 2019, takes the position that:
“[I]f a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea…), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
However, it should be noted that courts have not given deference to the USPTO guidance. In responding to an office action, an attorney should argue for § 101 eligibility under both the USPTO guidance and any relevant case law.
The most relevant case law is the Alice/Mayo framework, as supported by the Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), cases. In step 1, one determines whether the claims are directed to a patent-ineligible concept, i.e., an abstract idea. In step 2, one considers the elements of each claim (both individually and as an ordered combination) and determines whether the additional elements transform the nature of the claim into a patent-eligible application.
In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the Federal Circuit focused on step 2 of the Alice/Mayo framework to determine that, while Berkheimer’s independent claim was not patent-eligible, some of the dependent claims may be patent eligible. Berkheimer argued that the claimed combination improves computer functionality in a digital asset management system through the elimination of redundancy and the one-to-many editing feature, which provides an inventive concept. The court specifically noted the following patent-eligible improvements in the dependent claims: (i) eliminating redundancy and (ii) a one-to-many editing process where a singular linked object, common to many documents or files, can be edited once and have the consequence of the editing process being propagated through all of the linked documents and files (reducing the effort needed to update files).
As artificial intelligence and machine-learning technologies become more and more ubiquitous, innovative companies outside the software industry are well advised to begin seeking patents in this space. Selecting knowledgeable and experienced artificial intelligence patent counsel may be beneficial in ensuring successful patent portfolio development.
 Eric Johnson, In 10 years, every “relevant” company will be a tech company, Stitch Fix CEO Katrina Lake says, Vox (Jul. 24, 2019), https://www.vox.com/recode/2019/7/24/20707751/katrina-lake-stitch
 Artificial intelligence, Wikipedia, https://en.wikipedia.org/wiki/Artificial_intelligence (last visited Jun. 10, 2019).
 See generally Automation: Last Week Tonight with John Oliver (HBO), YouTube (Mar. 3, 2019) https://www.youtube.com/watch?v=_h1ooyyFkF0.
 See generally The Robots Are Coming, The Money Blawg (May 20, 2019), https://moneyblawg.com/the-robots-are-coming/.
 Machine learning, Wikipedia, https://en.wikipedia.org/wiki/Machine_learning (last visited Jun. 10, 2019).
 Andriy Burkov, The Hundred-Page Machine Learning Book 1 (2019).
 Tom Simonite, Despite Pledging Openness, Companies Rush to Patent AI Tech, Wired (Jul. 31, 2018), https://www.wired.com/story/despite-pledging-openness-
 Diamond v. Diehr, 450 U.S. 175 (1981).
 U.S. Patent No. 8,478,535.
 Federal Register Vol. 84, No. 4, Jan. 7, 2019 (available at: https://www.federalregister.gov/documents/2019/01/07/2018-
Patent Machine-Learning Inventions for Companies Outside the Software Industry
By: Gregory rabin
The Trading Technology Saga:
When is an invention sufficiently ""technical""?
By: clint mehall
In June 2014, when the Supreme Court decided Alice, few if any, patent attorneys expected the devastating impact the decision would have on computer-based inventions. After all, there was nothing in Alice that seemed to doom a majority of computerized inventions. Alice attacked inventions directed to “abstract ideas,” but did so in a roundabout manner that did not read like a seismic shift. Alice set forth generalized guidelines attempting to illustrate when an invention is or is not directed to patent-eligible subject matter under 35 U.S.C. 101. Apart from a number of vague suggestions as to what is not patent eligible, Alice mentioned that solving a technological problem in conventional industry practice, improving computer technology, or improving any other technology or technical field could lead to an invention as being considered to be directed to patent eligible subject matter.
However, in the years since Alice was decided, in certain instances, poorly drafted, broad claims have allowed the Federal Circuit to tee off on computer-based inventions that most would agree likely should not have issued in the first place (at the very least for indefiniteness and obviousness reasons). These inventions were subject to attack by the Federal Circuit based on Alice, and the Federal Circuit found the claims to be patent ineligible. The problem with some of these decisions is that the Federal Circuit overemphasized certain aspects of the claims, using sweeping language that could be applied to almost any computer-based invention.
Most egregiously, the language in Electric Power Group set up examiners at the USPTO and judges in the federal courts with an arsenal to attack the patentability and validity of substantially all computer-based inventions under 35 U.S.C. 101. In particular, the most frequently cited, rather nonsensical, quote from Electric Power Group is that the claims were invalid as being directed to patent-ineligible subject matter because they involved “merely selecting information, by content or source, for collection, analysis, and display.” Excluding the term “merely,” which does not provide any useful guidance, this phrase can be used as a weapon to the attack the validity of any computer-based invention, as almost all computers select information, by content or source, for collection, analysis, and display. Following Electric Power Group, it has not been easy for interested parties to determine the lines that involve “merely” selecting information, by content or source, for collection, analysis, and display, and claims that do something sufficiently more than selecting information, by content or source, for collection, analysis, and display in the eyes of the Federal Circuit.
Federal Circuit cases shedding a few rays of light on what involves more than “merely selecting information, by content or source, for collection, analysis, and display” often decide whether an invention is directed to patent-eligible subject matter based on whether it solves a technological problem. However, the analysis usually is rather vague and fails to delimit what constitutes and does not constitute a technological problem in a particular field, especially when invoking the functionality of a computer’s graphical user interface (GUI).
Over the past three years, the Federal Circuit has decided six different cases for computer-based inventions involving GUIs for the same company, Trading Technologies International, Inc., known as Trading Tech. Trading Tech creates and sells electronic trading software, and GUIs have been pivotal in its business. The Federal Circuit has ruled in Trading Tech’s favor in two of the six cases and has ruled against Trading Tech in the four most recent cases. Five of the six cases involved decisions as to whether the claims were directed to patent-eligible subject matter under 35 U.S.C. 101, and the issue of whether the claims solved a technological problem or improved an existing technology was a deciding factor. The other decision addressed the similar question as to whether the claims were directed to “patents for technological inventions” and thus a post grant Covered Business Method (CBM) review proceeding within the USPTO was justifiably instituted. Four of the five decisions addressing patent eligibility also addressed whether a CBM review was justifiably instituted. The below analysis of these six Trading Tech cases attempts to shed some light on the boundaries between claims directed to, under 35 U.S.C. 101, a patent- eligible invention or a patent-ineligible invention.
Trading Technologies International, Inc. v. CQG, Inc. (Fed. Cir. Jan 2017)(nonprecedential)
The first Trading Tech case involved whether U.S. Patent No. 6,772,132 (“the ’132 patent) and 6,766,304 (“the ‘304 patent”) were invalid under 35 U.S.C. 101. The patents at issue were directed to a method of trading that solves “problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered.” The claimed methods and systems reduced “the time it takes for a trader to place a trade when electronically trading on an exchange.” Specifically, “bid and asked prices are displayed dynamically along the static display, and the system pairs order with the static display of prices and prevents order entry at a changed price.” The claims included displaying an order entry region, setting a plurality of parameters and a sending a trade order in response to selection of a particular location.
The district court found the patents “solve problems of prior [GUI] devices . . . in the context of computerized trading relating to speed, accuracy and usability” and that these patents are directed to improvement in existing [GUI] devices that have no ‘pre-electronic trading analog,’ and recite more than ‘setting, displaying, and selecting’ data or information that is visible on the [GUI] device.” The district court further found that the “patents do not simply claim displaying information on a [GUI]” but instead “require a specific, structured [GUI] paired with a prescribed functionality directly related to the [GUI]’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.” The district court concluded that the claims are not directed to an abstract idea under step 2A of Alice and also involve an “inventive concept” under step 2B of Alice. The district court emphasized that the “static price index” in the claims was an inventive concept that allows “traders to more efficiently and accurately place trades using this electronic trading system” and that “specific structure and concordant functionality of the [GUI] are removed from abstract ideas, as compared to conventional computer implementations of known procedures.”
The Federal Circuit agreed with the reasoning of the district court, citing DDR Holdings, McRO and Enfish stating that “specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter,” in contrast to claims directed to a result “without implementing programmatic structure” as in Affinity Labs, and the claims from Apple v. Ameranth, and Electric Power Group that “generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology.”
The Federal Circuit concluded that the claimed invention was patent eligible, finding that it improved an existing technology because it “improves the accuracy of trader transaction, utilizing a software-implemented programmatic met,” it is “directed to a specific improvement to the way computers operate” and because it “imparts a specific functionality to a trading system ‘directed to a specific implementation of a solution to a problem in the software arts.’”
IBG LLC, Interactive Brokers, LLC v. Trading Technologies International, Inc. (Fed. Cir. Feb. 2019) (nonprecedential)
The second Trading Tech case involved whether four Trading Tech patents—the ’304 patent the ’132 patent (the same two patents in the first Trading Tech case from 2017) and U.S. Patent Nos. 7,676,411 (“the ‘411 patent”) and 7,813,996 (“the ’996 patent”)—were properly subjected to CBM review by the USPTO. All four patents shared the same specification. The PTAB instituted the CBM review and held that the claims of the ’304 and ’132 patents were patent eligible, but the claims of the ’441 and ’996 patents were patent-ineligible. Trading Tech appealed the finding of ineligibility of the ‘411 and ‘996 patents and that the CBM instituted was proper, and Petitioners appealed the finding of eligibility of the ‘304 and ‘132 patents.
The Federal Circuit explicitly stated that the discussion in the first Trading Tech case from 2017 “in the context of eligibility is instructive to the technological invention question” and determined that the institution of the CBM was improper because all four of the patents were for “technological inventions.” The Federal Circuit explained that claims are directed to a “technological invention” when “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art and . . . solves a technical problem using a technical solution.” The Federal Circuit found that the technical problem for prior GUIs in which the inside market remains stationary is that “[a] trader might intend to click on a particular price but, between the time he decides to do so and the time he actually clicks (which may be only hundredths of a second), the price may change. He may not be able to stop the downward motion of this finger and the order would be send to market at the incorrect or undesired price.” This problem is solved “by displaying market depth on a vertical or horizontal plane, which fluctuates logically up or down, left or right across the plane as the market fluctuates.”
Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. Apr. 18., 2019)
The third Trading Tech case involved whether three Trading Tech patents—U.S. Patent Nos. 7,533,056 (“the ’056 patent”), 7,212,999 (“the ’999 patent) and 7,904,374 (“the ’374 patent”)—were properly subjected to CBM review by the USPTO and were invalid under 35 U.S.C. 101. The PTAB instituted the CBM review and held that the claims of the three patents were patent ineligible. Trading Tech appealed the finding of ineligibility and that the CBM institution was proper.
CBM Review Institution
The Federal Circuit addressed the ’056 and ’999 patents together because they shared a specification and found that these patents were not directed to “technological inventions” because the claimed operations of “receiving bid and offer information from an electronic exchange, displaying such information (‘bid indictors’ and ‘offer indicators’), and sending an order to the electronic exchange based on a user input” did not “solve a technical problem using a technical solution.”
Trading Tech argued that the “inventions addressed technical problems in the way prior art GUI tools were constructed and operated.” More specifically, Trading Tech asserted that “the ’999 patent addressed problems related to speed, efficiency, and usability, and the ’056 patent addressed problems related to intuitiveness, visualization, and efficiency.” The Federal Circuit rejected those arguments by stating that “[t]he specification makes clear that the invention simply displays information that allows a trader to process information more quickly,” which “makes the trader faster and more efficient, not the computer.” Simply making the trader faster was not a technical solution to a technical problem.
Next, addressing the ’374 patent, the Federal Circuit rejected Trading Tech’s arguments that invention solves a technical problem because the “GUI solves a problem that might cause the trader to submit an order at a price he did not intend.” The court found that the claimed invention did not actually solve this problem because the claim “provide[s] no indication to a user of market information, such as price, order quantity, or order type[,] and the graphical locations could be ‘black boxes’ with price values associated with them, and no information provided to the user indicating that price value, order quantity, or the order type.” Like the claims of the ’056 and ’999 patents, the invention of the ’374 patent improved trader efficiency, not the functioning of the computer.
The Federal Circuit also found that the claims of each of the ’999, ’056 and ’374 patents were directed to the ineligible subject matter under the test set forth in Alice.
With respect to the ’999 patent, the court found that representative claim 1 was directed to “the abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order.” The court summarized the claim steps and said the claim “essentially describes receiving information, which the specification admits was already available to ‘market makers,’  and displaying that information.” With respect to additional language of claim 1, the Federal Circuit relied on Electric Power Group and found that “sending an order by ‘selecting’ and ‘moving’ an order icon to a location along the price axis” was an abstract idea, because “placing an order based on displayed market information is a fundamental economic practice,” regardless of the specificity in which the order is placed in the claim. The court rejected arguments that the claim, like in Core Wireless, improves the way a computer operates, by finding that the claims “do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem. Instead, they recite a purportedly new arrangement of generic information that assists traders in processing information more quickly.” The court also found that the claim did not include an inventive concept that is significantly more than the abstract idea, as “receiving market information is simply routine data gathering, and displaying information as indicators along a scaled price axis is well-understood, routine, conventional activity” and “selecting and moving an icon is well-understood, routine, conventional activity.”
With respect to the ’056 patent, the Federal Circuit found that claim 1 is directed to the “abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order” and was not meaningfully different from the ’999 claims. Trading Tech argued that the claims included an inventive concept that is significantly more than the abstract idea because they “improve computer functionality by improving on the intuitiveness and efficiency of the prior GUI tools.” However, the court rejected these arguments, again finding that the “specification makes clear that this invention helps the trader process information more quickly” and the invention is “not an improvement in computer functionality.” Even dependent claims 5 to 7, which recited details of displaying an order icon, along with further details about the bid and offer indicators, were rejected as being similarly deficient with respect to improving computer functionality.
With respect to the ’374 patent, the Federal Circuit found claim 1 is directed to “abstract idea of receiving user input to send a trade order.” The court noted that “claim 1 only minimally requires collecting and analyzing information and includes no requirement that any of that information is displayed . . . because the claim requires ‘displaying . . . graphical locations along an axis,’” with not requirement that the graphical locations display the price levels that are mapped to them, or that the graphical locations provide any information to the user.” The court similarly rejected Trading Tech’s assertions that that the claims “improve computer functionality by improving on the intuitiveness and efficiency of the prior GUI tools” because the specification made clear the invention improved the trader, and the computer functionality.
Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. Apr. 30, 2019)
The third Trading Tech case involved the CBM review of one Trading Tech patent – U.S. Patent No. 7,783,556 (“the ’556 patent”), which Petitioners asserted was invalid under 35 U.S.C. 101. The PTAB instituted the CBM review and held that the claims of the ’556 patent were patent ineligible. Trading Tech appealed the finding of ineligibility and that the CBM institution was proper.
CBM Review Institution
As in the third Trading Tech case, the PTAB found that claim 1 was not a technological invention because the problem is “that traders need additional information on a trading screen to effectively analyze the market, which is a business problem, not a technical one.” The problem solved by patent is “providing ‘highly relevant information’ that is ‘not normally provided in an electronic exchange’s data feed nor displayed by a trading screen’ to a trader.” Previously, traders “might make quick mental calculations, use charting software, or look to other sources to provide additional insight beyond what is normally provided.”
The claimed invention uses a known trading screen, “calculates P&L for ‘a range of prior levels,’ and displays the P&L values along an axis.” The court rejected Trading Tech’s arguments that the invention “improves the usability, visualization, and efficiency of prior art trading screens” and found that the claim involves “merely providing a trader with new or different information in an existing trading screen is not a technical solution to a technical problem.” Again, the court found that the claimed invention was subject to CBM review because “it focuses on improving the trader, not the functioning of the computer.”
The Federal Circuit emphasized that the “only difference from prior art is the display of P&L info on an axis, instead of price” and that “[i]nformation, whether displayed in the form of price values or P&L values, is abstract.” Also, the calculation and display of the P&L “is nothing more that ‘mere automation of manual processes using generic computers.’” The court rejected Trading Tech’s arguments that the claims “provide a particular [GUI] that improves usability, visualization, and efficiency” because the claims simply involve a generic computer and “do not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem.” The court analogized the claims to those in Electric Power Group and found that “the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the result, and not any particular assertedly inventive technology for performing those functions.” The court also found that the claims do not involve an inventive concept because “[e]ven if no trading screen had previously displayed P&L values, “a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders to the invention ‘significantly more’ than the that ineligible concept.”
Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. May 21, 2019)
The fifth Trading Tech case involved the CBM review of four Trading Tech patents – U.S. Patent No. 7,412,416 (“the ’416 patent”); 7,818,247 (“the ’247 patent”); 7,685,055 (“the ’055 patent”); and 7,693,768 (“the ’768 patent”), which Petitioners asserted were all invalid under 35 U.S.C. 101. The PTAB instituted the CBM review and held that the claims of all four patents were patent ineligible. Trading Tech appealed the findings of ineligibility and that the CBM institution was proper, and the Federal Circuit affirmed in a two paragraph decision that stating the claims are not distinguishable from the third and fourth Trading Tech cases, and they improve the trader, not the functioning of the computer.
Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. July 1, 2019)
The sixth Trading Tech case involved the CBM review of one Trading Tech patent – U.S. Patent No. 7,725,382 (“the ’382 patent”), which Petitioners asserted was all invalid under 35 U.S.C. 101. The PTAB instituted the CBM review and held that the claims of the patents were patent ineligible. The PTAB decision concluded that the claimed invention was “directed to a fundamental economic principle or a longstanding commercial practice and not directed to an improvement in the computer, but simply to the use of the GUI in a method of placing an order based on displayed market information, as well as updating market information” and that “all potentially technical aspects of the claims” were well known. Trading Tech appealed the findings of ineligibility and that the CBM institution was proper, and the Federal Circuit affirmed the PTAB decision in a Rule 36 decision.
Summary of the Federal Circuit’s Reasoning and Conclusions
From an initial glance at the above decisions, it is easy to assume that the Federal Circuit found that the claims in the first two Trading Tech § 101 cases were directed to patent eligible subject matter because the claims solve technical problems of prior trading GUIs related to speed, accuracy and usability, but the claims in the last four Trading Tech § 101 cases were directed to patent ineligible subject matter because the claims merely improved the trader and not the computer functionality. However, a detailed review of the opinions and a comparison of the claims complicates the analysis. For example, in the January 18, 2017 decision, the Federal Circuit agreed with all of the reasons articulated by the district court, which included the finding that the inventive concept in that case that allows “traders to more efficiently and accurately place trades using this electronic trading system.” Similarly, in the February 13, 2019 decision, the Federal Circuit described the technical problem solved by the invention as follows:
[A] trader might intend to click on a particular price but, between the time he decides to do so and the time he actually clicks (which may be only hundredths of a second), the price may change. He may not be able to stop the downward motion of his finger and the order would be sent to market at an incorrect or undesired price.
Accordingly, the fact that the inventive concept improved the trader did not seem to be outcome determinative in the first two Trading Tech § 101 decisions. The first two opinions seemed to put more emphasis on the invention not merely being directed to a result and the invention including limitations that are a specific to solving a problem or that improve the functioning of technology.
It was not until the April 18, 2019 decision that the Federal Circuit suggested that an improvement provided by an invention which could be considered as only improving the trader could be patent-ineligible for being non-technical. The Federal Circuit did not cite any case law supporting this reasoning, nor did the court explain the extent that the outcome was based on the finding that the computer was improved in a manner that simply impacted the trader, and not any specific computer functionality. In the April 30, 2019 decision, the Federal Circuit came to the same conclusion that the invention merely improved the trader, and thus was not patent eligible.
What exactly does “Technical” or “Technological” Mean?
What is not at all clearly articulated in any of the Trading Tech cases, or any other Federal Circuit or Supreme Court to date, is the definition of “technical” or “technological.” Similarly, the American Invents Act (AIA) that established CBM reviews does not provide any such guidelines. In order to provide any clarity whatsoever in the patent eligibility analysis, simple and straightforward guidelines need to be set forth as to what is meant by “technical” or “technological.” To date, since the Supreme Court decided Alice, the USPTO has issued 42 different examples trying to illustrate what constitutes patent eligible subject matter and what does not constitute patent eligible subject. This, along with USPTO’s valiant attempt to provide clarity with the 2019 Revised Patent Subject Matter Eligibility Guidance, published in January 2019, have still not rendered determinations of patent eligibility under 35 U.S.C. 101 easy to flesh out. The 2019 Revised Patent Subject Matter Eligibility Guidance indicates that a claimed invention may be patent eligible if one or more elements of the claim reflect “an improvement to other technology or technical field,” but does not provide any guidance into what is meant by this, other than referencing DDR Holdings, Finjan and Core Wireless, which do not get into detail as to what constitutes a technology or technical field.
Starting with Alice
The language “technological problem” did not appear in a Federal Circuit or Supreme Court case related to patent eligibility until Alice, which, while discussing why the claims in Diamond v. Diehr were deemed patent eligible, mentioned that the invention was “designed to solve a technological problem in ‘conventional industry practice.’” However, in Diamond v. Diehr, the Court did not discuss whether the invention involved a technical or technological problem, but instead described the invention as “solving a practical problem.” Accordingly, there is no guidance from either of these decisions as to what constitutes a “technological problem.”
Establishing CBM Challenges under the AIA
As noted above in the Trading Tech decisions, Section 18 of the AIA launched CBM Review to challenge patents that claim “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” “Technological inventions” were defined as an invention in which “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” However, what is meant by “technical problem” or “technical solution” has not been clearly defined by the AIA or subsequent Federal Circuit decisions.
According to Merriam-Webster, the term “technical” has six different definitions, with the most instructive ranging from narrow definitions including “having special and usually practical knowledge especially of a mechanical or scientific subject” and “of or relating to a practical subject organized on scientific principles’’ to broader definitions of “marked by or characteristic of specialization” and “of or relating to a particular subject.”
“Technological” has two definitions: (1) “of, relating to, or characterized by technology” and (2) “resulting from improvements in technical processes that increase productivity of machines and eliminate manual operations or operations done by older machines.” “Technology” has three main definitions (1) “the practical application of knowledge especially in a particular area,” (2) “a manner of accomplishing a task especially using technical processes, methods, or knowledge” and (3) “the specialized aspects of a particular field of endeavor.”
Accordingly, “technical” and “technological” could possibly have more specific meanings that limit patent eligibility to inventions that increase the productivity of machines, or more general meanings that expand patent eligibility to any computer-based invention that involves a practical improvement in any field.
Can a Computer System that improves a Human’s Performance Solve a Technological Problem?
Like any Federal Circuit or Supreme Court decision that sets forth a changed analysis in judging patentability, it is useful exercise to attempt to understand how the Trading Tech cases could be used to advance our understanding as to what is patent eligible subject matter. In particular, can a computer system that improves a human’s performance solve a technological problem? As is clear from the above, what exactly is a technological or technical problem is not particularly clear in the context of patent eligibility, even when using common definitions of “technical” or “technological.” The first two Trading Tech cases seem to suggest that improving the performance of a trader is sufficiently technical to be considered as solving a technological problem if the claims recite steps that result in the improvement in a manner that is less results-oriented. However, the first two Trading Tech cases are nonprecedential, and the last four Trading Tech cases suggest that improvements to GUIs can almost never be sufficiently technical to solve a “technological problem,” as GUIs are inherently almost always designed to improve some aspect of human performance.
Moreover, whether a GUI solves a “technological problem” surely depends on how broadly or narrowly “technical” or “technological” are interpreted. For example, if these terms are interpreted in a manner that limits patent eligibility to inventions that increase the productivity of machines, as mentioned as a narrow possible interpretation above, GUIs will only be patent eligible if the computer including the GUI is made more efficient or if the GUI somehow improves the efficiency of another machine. With a such a narrow interpretation, GUI claims not improving productivity of a machine would be patent ineligible regardless of how specifically the functionality of the GUI is claimed, or whether such functionality improves a field. But if these terms are interpreted in a manner that expands patent eligibility to inventions that involve a practical improvement in any field, as mentioned as a broad possible interpretation above, GUIs will be patent eligible if they improve a field in a manner that is not solely “results oriented.” Essentially any field could be “technical,” as long as the GUI solves conventional problems in the field.
For a company like Trading Tech, it is extremely counterintuitive to suggest that its improvements in electronic trading software are not “technological,” so it would seem more logical for “technical” or “technological” to be interpreted in accordance with broader definitions. After all, in society, we refer to companies that sell software and provide it as a service as “technology companies.” Nobody would refer to a rubber curing company as a technology company, illustrating that what is meant by “technical” or “technological” does not have consistent definition over time.
From legal precedent to date, it can be assumed that the definitions of “technical” or “technological” are currently somewhere in the spectrum between the broad and narrow definitions described above. And as almost anyone following the Federal Circuit can agree, where the definitions fall on the spectrum can depend on the specific panel of judges. At the very least, when drafting new patent applications, it should be kept in mind that “a specific, structural GUI paired with a prescribed functionality directly related to the GUI’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art” is likely to have a greater chance of success, than the display of new information on a GUI, even if this display of new information solves a problem. While broad claims have generally been the gold standard in patent law, more narrow specifically tailored claims that include features that are described in the specification as addressing a specific problem in conventional industry practice, especially one that does not simply improve human performance.
It may also be presumptuous to read the Trading Tech decisions as applicable to inventions outside of the financial field. Financial related inventions have long been treated as less worthy of patent protection, as evidenced by both Alice and Bilski. Of course, there is always danger in assuming that a case limited to a specific set of facts in a specific field will not be expanded into other fields, in the same manner as Electric Power Group. This danger illustrates that what constitutes patent eligible subject matter should be addressed by Congress to provide clarity, or the already narrow subset of computer inventions considered to patent eligible will very likely be further narrowed and even the most inventive and narrowly tailored GUI claims will not be protectable by patents.
Proposed Patent Reform Legislation
Patent eligibility reform is currently being discussed in Congress. The initial draft, which was released on May 22, 2019, removed all limits on patent eligibility. However, after the hearings of June 4th and 5th, the co-sponsor of the bill, Sen. Thom Tillis, stated that the final bill would need to include more limits on patent eligibility.
As shown by the above analysis of the Trading Tech cases, it is clear that the current state of patent eligibility law is unpredictable and needs to be clarified. Any clarification should not use the terms “technical” or “technological” as benchmarks without providing explicit examples of what is meant by this language. A good starting point would be take patent eligibility back to its basics, focusing on prohibiting inventions that would preempt a basic pioneer invention from being used in any field. If “technical” or “technological” are to play any role in patent eligibility, the terms should only prohibit computer-based inventions that do not involve any practical improvement in any field. Patent eligibility should return to being a mere threshold filter, allowing the more straightforward statutory provisions of 35 U.S.C. 112 and 35 U.S.C. 103 to knock out patent-unworthy inventions.
 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
 Id. at 221–225.
 Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
 Id. at 1355.
 Trading Techs. Int'l, Inc. v. CQG, Inc., 675 F. App'x. 1001 (Fed. Cir. 2017).
 Id. at 1002.
 Id. at 1003.
 Id. at 1004.
 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Fir. 2016).
 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
 Affinity Labs of Tex. v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016).
 Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
 Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
 Trading Techs., 675 F. App'x. at 1004–1005.
 Id. at 1006.
 IBG LLC v. Trading Techs. Int'l, Inc., 757 F. App'x. 1004 (Fed. Cir. Feb. 2019).
 Id. at 1006.
 Id. at 1007.
 Id. at 1006–1007.
 Id. at 1007.
 Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084 (Fed. Cir. 2019).
 Id. at 1087.
 Id. at 1087–1089.
 Id. at 1089.
 Id. at 1089–1090.
 Id. at 1090.
 Id. at 1091.
 Id. at 1091-1095.
 Id. at 1092.
 Id. (citation omitted).
 Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018).
 Id. at 1093.
 Id. at 1094.
 Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019).
 Id. at 1381.
 Id. at 1382.
 Id. at 1383.
 Id. at 1384.
 Id. at 1384-1385.
 Id. at 1385.
 Id. (citing BSG Tech LLC v. Buyseasons Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)).
 Trading Techs. Int'l, Inc. v. IBG LLC, 767 F. App’x 1006 (Fed. Cir. 2019).
 Id. at 1007.
 Trading Techs. Int'l, Inc. v. IBG LLC, 771 F. App’x 493 (Fed. Cir. 2019).
 Trading Techs. Int'l, Inc. v. IBG LLC, CBM2016-00090, 2 (PTAB Dec. 7, 2017).
 Id. at 3.
 Id. at 31.
 Id. at 33.
 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (U.S. Patent & Trademark Office Jan. 7 2019), available at https://www.federalregister.gov/documents/2019/01/07/2018-28282
 Id. at 55.
 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014).
 Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
 Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018).
 Diamond v. Diehr, 450 U.S. 175 (1981).
 Alice, 573 U.S. at 223.
 Diehr, 450 U.S. at 181.
 37 C.F.R. § 42.301(b).
 Trading Tech., 675 F. App’x at 1004.
 Bilski v. Kappos, 561 U.S. 593 (2010).
As our Association approaches the beginning of its second century, we can plan for a time of celebration and reflection. We will celebrate the Association’s many accomplishments over the years as the nation’s largest regional IP law association—with a geographical reach from New York and New Jersey to Connecticut and Vermont.
The first Judges Dinner was held at the Waldorf in 1922 at a time when the Waldorf and Astoria were two separate hotels located at a site now occupied by the Empire State Building. The two hotels were separated by a walkway dubbed “Peacock Alley” for the folks in their fineries strutting between the two.
The first Dinner featured a menu printed in the form of a patent to inventors “Cook” and “Chef”. Since Prohibition was the order of the day, the menu depicted an empty cocktail glass whose contents were said to be perhaps not made by a secret process, but most certainly by a process in secret.
The golden anniversary Dinner celebration in 1972 was held at the Waldorf Astoria in its current location on Park Avenue. It featured a dinner menu in the form of a reissue of the “Cook” and “Chef” patent with the contents of the cocktail glass fully described.
The seventy-fifth Dinner celebration in 1997 featured a booklet keep sake describing the history of the organization to that date. A digital version of that history is available on the NYIPLA website under the tab “About Us”. The Dinner also featured speeches by Giles S. Rich and William C. Conner. Both were federal judges, patent lawyers, and past presidents of the Association.
It seems premature to know specifics of our centennial celebration in 2022. Nonetheless, another rendition of the “Cook” and “Chef” patent might materialize, perhaps with new meaning attached to the word “Prohibition” by then.
It is not too soon to start planning for the centennial celebration. It is also not too soon to be thinking about the Association's goals for its second century. It goes without saying that it will take a Village of our members to sustain our organization over the short and long hauls. That Village will help determine how the word “story” in our history plays out during the second century.
(1) Mr. Carlson is NYIPLA past president and current historian. He is the IP law concentration director at Quinnipiac University School of Law in North Haven, CT. The views expressed herein are those of the author and do not reflect the views of NYIPLA or Quinnipiac University School of Law.
By : Dale carlson
AS TIME GOES BY - IT TAKES A VILLAGE
Notable Trademark Decisions
By: Scott Greenberg, frank misiti, and reece brassler
Federal Circuit: Hylete Waives “Composite Common Law Mark” Argument, Loses Appeal to Register ‘H’ Mark
In January 2013, Hylete LLC (“Hylete”) applied to register a trademark application for their stylized ‘H’ mark in International Class 25 for athletic apparel, namely shirts, pants, shorts, jackets, footwear, and caps. The examining attorney approved the application and published it for opposition.
In October of the same year, Hybrid Athletics LLC (“Hybrid”) opposed Hylete’s mark, claiming a likelihood of confusion with its stylized ‘H’ mark, registered in International Class 41 in connection with fitness classes, health club services, provision of instruction and equipment in physical exercise field, and personal fitness training. Hybrid also pleaded its common law rights to its mark featuring the same stylized ‘H’ above the words “Hybrid Athletics” and a row of dots.
During the opposition proceeding, Hybrid submitted images of its composite common law mark on various athletic apparel items. Even so, Hylete’s opposition proceeding arguments focused on the stylized ‘H’ and the substantial dissimilarities between and distinct commercial expression of Hylete’s and Hybrid’s marks.
In December 2016, the Board sustained Hybrid’s opposition to Hylete’s registration after balancing the factors set forth in In re E.I. DuPont de Nemours & Co, 476 F.2d 1357 (CCPA 1973), and determining Hylete’s mark would likely cause confusion with Hybrid’s composite common law mark, the only mark on which the Board based its conclusions.
Hylete filed a request for reconsideration of the Board’s final decision, arguing, inter alia, that the Board erred by: (1) misapprehending the commercial expression of Hylete’s mark; and (2) ignoring the lack of evidence demonstrating that consumers would view Hylete’s mark as a stylized ‘H’. The Board pointed to Hylete’s own arguments referencing the Hylete mark as a stylized ‘H’ and noted that Hylete’s CEO testified that both Hylete’s and Hybrid’s marks depicted an ‘H’.
Hylete appealed and, for the first time, focused its arguments solely on Hybrid’s composite common law mark. Hybrid argued that Hylete, by failing to raise its composite common law mark arguments at any prior stage of the proceedings, had waived the argument. To avoid waiver, Hylete argued that the Board raised the issue of Hybrid’s common law rights sua sponte.
The United States District Court of Appeals for the Federal Circuit held that Hylete waived the argument. The Court found that Hybrid put Hylete on notice to its claim of common law trademark rights from the outset of the opposition and that Hylete could have addressed the argument at any point during the opposition proceeding. Hylete LLC v. Hybrid Athletics, LLC, 931 F.3d 1170, 2019 USPQ2d 285253 (Fed. Cir. Aug. 1, 2019) [precedential]. [RB]
TTAB Holds That Confusion Is Not Likely Between RICHARD MAGAZINE for Fashion-Related Publications and Services and RICARDO for Culinary Publications and Services
Ricardo Media Inc. (“RMI”) filed a notice of opposition to the application for a trademark registration entitled RICHARD MAGAZINE filed by Inventive Software, LLC (“Inventive”). RMI, relying on its previously issued registration for RICARDO, claimed that the use of the RICHARD MAGAZINE mark is likely to cause confusion as to the source of Inventive’s services.
Inventive operates a website/magazine at richardmagazine.com. Inventive sought registration of RICHARD MAGAZINE in connection with providing a website in the field of fashion and beauty under Class 35. Inventive also sought registration in Class 41.1. in connection with entertainment services, including providing a website featuring photographic, audio, video, and prose presentations for fashion.
RMI is a culinary culture and lifestyle company that produces television shows and publishes a magazine and website covering food, recipes, and other culinary and lifestyle topics. RMI’s RICARDO trademark is registered in Class 8 for forks, knives and spoons. The RICARDO trademark is also registered in other classes that cover publications for books and magazines in the culinary field, kitchen utensils and accessories, aprons, oven mitts, and production of television programs in the culinary field.
The Trademark Trial and Appeal Board conducted an analysis as to whether the use of the RICHARD MAGAZINE mark would result in a likelihood of confusion with the RICARDO trademark. In such an analysis, the two key considerations are the similarities between the marks and the similarities between the goods and services.
In examining the similarity between the marks, the Board considers the marks in their entireties as to appearances, sound, connotation and commercial impression. The Board determined that when the marks are considered in their entireties, the differences significantly outweighed the similarities. First, it determined that the combination of the different names and the additional word - - that is, magazine - - in Inventive’s mark makes the marks more dissimilar in appearance.
Second, the Board determined that the marks sound different. Lastly, when the connotation of the marks was examined, the Board considered whether to apply the doctrine of foreign equivalents. The doctrine of foreign equivalents treats differently spelled words as having the same meaning where a foreign word, when translated into English, means the same as the English word. The Board determined that the doctrine of foreign equivalents does not apply to first names such as RICHARD and RICARDO unless there is evidence that consumers would translate the names. Here, no such evidence existed because personal names often convey more than one meaning and translating the mark would point to a different person, as well as a different source.
In comparing the goods and services, the Board focused on RMI’s magazines, books and television programs because they were much closer to Inventive’s services. The Board determined that while RMI’s services have an inherent relationship to Inventive’s services, the goods and services are different. This is due to the fact that RMI’s books, magazines, and television programs are limited to the culinary field, while Inventive is focused on fashion, beauty, and lifestyle. Even though the content is delivered in related ways, the content is different and not closely related.
The Board concluded that the marks are different in their entireties and dismissed the opposition. Ricardo Media Inc. v. Inventive Software, LLC, 2019 U.S.P.Q.3d 311355 (TTAB August 21, 2019) [precedential]. [FM]
TTAB Finds Umbrella Design Functional and Lacking Acquired Distinctiveness
OEP Enterprises, Inc. (“OEP”) applied to register the product design shown below in connection with umbrellas, claiming acquired distinctiveness under Section 2(f) of the Lanham Act (15 U.S.C. § 1052(f)):
Registration was refused on two grounds: (1) under Section 2(e)(5) (15 U.S.C. § 1052(e)(5)) on the ground that the mark is a functional design for the goods; and (2) under Sections 1, 2, and 45 (15 U.S.C. §§ 1051, 1052, and 1127) on the ground that the mark consists of a non-distinctive product design that has not acquired distinctiveness under Section 2(f). OEP appealed the refusal to the TTAB (“the Board”), which affirmed both grounds of refusal in a precedential decision. In re OEP Enterprises, Inc., 2019 USPQ2d 309323 (TTAB Aug. 19, 2019).
Defining the Applied-For Mark – In its application, OEP described the mark as “a three-dimensional configuration of the goods, in the form of an umbrella with a two-tiered canopy, wherein the inner canopy consists mostly of mesh,” which “also has a handle, shaft, runner and ribs.” In its appeal brief, OEP more specifically defined the mark as “a mesh lower canopy of a double canopy umbrella,” where the use of mesh is “just a design choice for the aesthetic use of the umbrella.” On the other hand, the Examining Attorney maintained that the applied-for mark must be construed as consisting of “a three-dimensional configuration of an umbrella comprising a handle, shaft, runner, ribs and double canopies incorporating a mesh component…”, because all of these elements are depicted in the drawing of the mark (shown above) in solid lines, and it would require the use of broken lines to exclude any product elements from the claimed mark. The Board agreed with the Examiner, noting that, while the Board may consider the verbal description of the mark set forth by the applicant, it is not bound thereby, and it is the drawing of the mark that is controlling with regard to the contents of the mark sought to be registered. Therefore, the Board assessed functionality and distinctiveness with regard to the entire umbrella design shown in the drawing. Id. at *2-3.
Functionality – The Board noted that a product design is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Id. at *3 (citing TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23 (2001)). Relevant evidence on this question may include the existence of a utility patent disclosing the utilitarian advantages of the design; advertising in which the design’s originator touts the design’s utilitarian advantages; the availability to competitors of functionally equivalent designs; and facts indicating that the subject design results in a comparatively simple or cheap method of manufacturing the product. Id. at *3. Also, the existence of a design patent covering the same design presumptively indicates that the design is not functional under Section 2(e)(5). Id. at *6.
OEP’s predecessor Windbrella Products Corporation (“Windbrella”) owned a now-expired design patent covering the exact same umbrella design, which creates a presumption of non-functionality. However, the Board held that this presumption was rebutted by the following other evidence that warranted a conclusion of functionality:
Design elements other than mesh lower canopy: OEP did not dispute the Examiner’s contention that the elements of the subject umbrella design other than the mesh lower canopy, i.e., the handle, shaft, runner, ribs, and upper canopy, are functional because of the roles that they play in the umbrella’s operation, e.g., users of the umbrella will use the handle to hold and/or operate the umbrella; the ribs, shaft, and runner of hold up the umbrella and enable it to fold and open; and the upper canopy blocks the rain or sunlight from the user. The Board therefore agreed with the Examiner that these elements are functional, but went on to consider whether the mesh lower canopy is also functional and, if not, whether its non-functionality makes the applied-for mark as a whole non-functional. Id. at *4.
Utility patent: Windbrella was also the owner of a now-expired utility patent in which the specification section discussed the advantages of mesh for the lower canopy including stability, rigidity, tautness, and minimizing the effects of gusts of wind, and benefits to the manufacturing process because the mesh material is easier to sew in. This was held to constitute strong evidence that the mesh element has direct utilitarian and economic benefits. Moreover, the patent’s claims cover all of the elements of the applied-for mark – lower canopy, handle, shaft, runner, and ribs. Dependent claims within the patent specifically claimed mesh for the lower canopy. Although the patent mentions that materials other than mesh can be used for the lower canopy, mesh was the preferred embodiment. The Board concluded that this patent teaches all aspects of the claimed mark and constitutes powerful evidence of functionality. Id. at *7-11.
Advertising evidence: The Board held that OEP’s advertising and promotional materials lent additional support to the conclusion of functionality. These materials generally tout the utilitarian advantages of the subject umbrella design, and various ads mention the advantages of all of the elements of the claimed design, including in some cases the mesh lower canopy. Id. at *11-13.
Availability of alternative designs: OEP presented evidence of alternative double-canopy umbrella designs, but failed to submit any evidence showing that these alternative designs work equally well. On the contrary, Windbrella’s utility patent maintained that the subject design was of superior utility to several of the alternative designs in OEP’s evidence. The Board found that since there was nothing of record to rebut the claims of the patent that these alternative designs were inferior to the subject design, the evidence regarding alternative designs actually supports the conclusion of functionality. Id. at *14.
Arguments regarding costs of manufacture: OEP’s attorney argued that the lower mesh canopy in the applied-for design increased the costs of manufacture relative to certain competitive designs. However, the Board held that these arguments were unsupported by evidence and therefore not probative. Also, Windbrella’s utility patent claimed cost savings for the subject design. In any case, where it is concluded that a product design is functional because it works better, evidence that the design costs more is irrelevant. Use-related benefits can be sufficient to support a conclusion of functionality without determining that the design in question also has cost-related benefits. Id. at *14-16.
Weighing all of the evidence, the Board held that applied-for design is functional.
Acquired distinctiveness – Although the holding of functionality independently supports refusal of the application, in the interest of completeness the Board also considered OEP’s claim of acquired distinctiveness. With respect to this issue, the Board noted that product designs can never be inherently distinctive and always require a showing of acquired distinctiveness under Section 2(f) in order to be registrable. The burden of proof of acquired distinctiveness is generally heavier for product configurations than for word marks, because consumers are not predisposed to view product features as source-indicators. Id. at *16.
The Board proceeded to consider the following categories of evidence proffered by OEP to establish acquired distinctiveness:
Direct evidence: OEP’s direct evidence of acquired distinctiveness included declarations of Windbrella’s founder and president (“Kupferman Declaration”) and of four re-sellers of the subject umbrella product and one competitor (“Third-Party Declarations”). Each of these declarations stated that resellers and consumers of the subject umbrella product recognize the configuration of the umbrella as unique and an indicator that it is OEP’s umbrella. None of the declarants were sufficiently established as expert witnesses and, therefore, were deemed by the Board to be fact witnesses. As fact witnesses, the Board held the declarants were insufficiently vague as to their interactions with consumers and competitors which formed the basis of their opinions as to the perceptions of the latter individuals. Additionally, the Third-Party Declarations were not fully representative of all of the categories of resellers and consumers of the subject umbrellas. Even with regard to the declarants’ own perceptions, the Board observed that the declarations established little more than that each declarant is familiar with the subject umbrella and associates it with OEP. “The declarants’ statements that the ‘mesh gives the Windbrella a clean design look that no other double canopy umbrella can show’ similarly appear to express only their belief that Applicant’s umbrellas alone contain this feature and are aesthetically more pleasing than those of competitors.” Id. at *21. For these stated reasons, the Board held that the direct evidence was not persuasive of acquired distinctiveness of the applied-for mark. Id. at *18-21.
Circumstantial evidence: OEP’s circumstantial evidence of acquired distinctiveness was also held to be unpersuasive:
Sales and advertising -- On one hand, the Board held that nearly 20 years of exclusive use of the subject umbrella design was supportive of acquired distinctiveness “to some extent”. However, although OEP’s levels of sales revenues and amounts spent on advertising were both significant, high sales levels do not themselves indicate recognition of the alleged mark as a source indictor; they only indicate success of the product. As to the advertising, none of OEP’s ads encouraged readers to “look for” the claimed features of the umbrellas as symbols of its source. Also, much of OEP’s sales were to the promotional products industry, where many of the umbrellas being sold were branded with the word marks of other parties. This presents a “significant hurdle” to proving acquired distinctiveness of the product design as indicating a single source of goods. While “look for” advertising might help to overcome this hurdle, as noted above, there was no such advertising of record in this case. Id. at *22-25.
Media coverage -- Evidence of media coverage was sparse and did not focus on the claimed design as an indicator of the source of the goods. Id. at *25.
Customer recognition -- The references in the Kupferman Declaration to customer inquiries about the umbrellas were not probative, because those references did not mention that customers “ask for the umbrellas in a way that shows that they uniquely associate the design with Applicant”. Id. at *25-26.
Copying and policing activity -- As to OEP’s enforcement efforts against claimed infringers of OEP’s trade dress rights, there was no evidence of record showing that competitors copied the umbrella’s design to trade on the configuration’s alleged distinctiveness of OEP as the source of the umbrellas, as opposed to copying for the desirable qualities or features of the design, such as those features discussed in the Windbrella utility patent. Further, the Board noted that the fact that competitors ceased using the design after receiving OEP’s demand letter could be due to the competitors’ desire to avoid litigation rather than the distinctiveness of the configuration. Id. at *26.
Considering the record in its entirety, OEP’s evidence was found insufficient to meet the substantial burden of proving acquired source distinctiveness.
The Board therefore affirmed the refusal to register on both grounds. In re OEP Enterprises, Inc., 2019 USPQ2d 309323 (TTAB Aug. 19, 2019) [precedential]. [SG]
Collective Membership Mark Confusion: The Pierce Arrow Society Denies the Revival of Pierce-Arrow Automobiles
The Trademark Trial and Appeals Board (the “TTAB” or the “Board”) recently sustained a collective membership mark owner’s opposition to Spintek Filtration Inc.’s (“Spintek”) application to register PIERCE-ARROW in International Class 12 for automobiles. The Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d ___ (TTAB Aug. 12, 2019) (citations to slip opinion).
The Pierce Arrow Society (the “Society”), a non-profit organization founded in 1957 with the mission of “preserving and fostering interest in [Pierce-Arrow] automobiles”, opposed Spintek Filtration’s application on the grounds that: (1) it makes a false suggestion of connection under Trademark Action Section 2(a), 15 U.S.C. §1052(a); and (2) it is likely to cause confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
I. Trademark Act Section 2(a): False Suggestion of a Connection Claim
Section 2(a) prohibits registration of marks that may falsely suggest a connection to any person, institution, belief, or national symbol. To succeed on a Section 2(a) claim, the opposer must satisfy all four elements of Univ. of Notre Dame du Lac, 217 USPQ 505.
The first Notre Dame factor requires consideration of whether “[t]he mark is the same as, or a close approximation of, the name or identity previously used by another person or institution.” Id. at 11 (citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps., 217 USPQ at 508-511). The TTAB answered affirmatively, finding that all that distinguished the marks were the words “The” and “Society” contained in the opposer’s mark, and neither of those words had any source-indicating significance. The TTAB also noted that the Society had disclaimed the distinguishing words. Id. at 12-13.
The second factor requires inquiry into whether “[t]he mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution.” Id. at 11. Despite finding that the marks were the same or a close approximation of one another, the TTAB found that the PIERCE-ARROW mark did not point uniquely and unmistakably to the Society’s mark because, inter alia, the Society itself argued that the mark refers not only to the Society, but to the defunct Pierce-Arrow Motor Car Company. Id. at 13-18.
The third factor raises the question of whether “[t]he person or institution named by the mark is not connected with the activities performed by the applicant under the mark” Id. at 12. Stating the obvious, the TTAB found that Spintek was not affiliated with the Pierce-Arrow Motor Car Company. Id. at 18.
Finally, the fourth factor gauges whether “[t]he fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods and services, a connection with the person or institution would be presumed.” Id. at 12. The TTAB found that the Society neither showed: (1) that it has any fame or reputation; or (2) that any such fame or reputation in the defunct Pierce-Arrow Motor Car Company survives and has been assigned or transferred to the Society. In support, the TTAB cited the remaining existence of only 2,400 Pierce-Arrow vehicles, the modest Society membership numbers and event turnout, and the Society’s limited advertising as evidence that there are not a substantial number of people with knowledge or interest in either the former company, the former company’s trademarks, or that any rights have been legally transferred to the Society. Id. at 18-20.
II. Trademark Act Section 2(d): Likelihood of Confusion
The TTAB’s Section 2(d) Likelihood of Confusion Analysis required the Board to analyze all facts in evidence relevant to the factors from In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), in the context of collective membership marks to determine whether the Society established by a preponderance of the evidence whether Spintek’s PIERCE-ARROW mark was likely to cause consumer confusion.
Unlike marks for goods and services, the sole purpose of collective membership marks is to indicate membership in an organization rather than involving the purchasers of goods or services. When comparing collective membership marks with trademarks or services marks, the question is not whether the marks are likely to confuse consumers as to the source of goods or services, but rather whether relevant persons are likely to believe that the trademark owner’s goods and/or services emanate from, are endorsed by, or in some other way associated with the collective organization.
Turning to the factors, the Board first considered the similarities and dissimilarities of the marks “in appearance, sound, connotation, and commercial impression.” Id. at 23. The Board found that the marks were highly similar because: (1) the only notable differences between the marks was the inclusion of the descriptive, and possibly generic, term “Society” at the end of the Society’s mark, which the Society had disclaimed; (2) the hyphen in Spintek’s proposed mark did not distinguish it from the Society’s; and (3) nothing about the marks would “lead consumers to conclude there are different sources for antique and modern automobiles” so as to change the “overall commercial impression.” Id. at 24-26.
Next, the Board considered whether there was a relationship between the goods and services, specifically automobiles and indicating membership in a national organization whose aim is to foster and preserve interest in the Pierce-Arrow cars. The Board raised concerns as to whether the Society’s current or prospective members would believe that the Society was affiliated with Spintek’s Pierce-Arrow automobiles because the Society’s mark does not distinguish whether it is interested in new or antique cars. Comparing this possibility with the clear relationship of beer and brewpubs, the TTAB found that Spintek’s automobiles and the Society’s membership services were clearly related. Id. at 26-33.
The Board then analyzed the respective marks’ trade channels, stating from the outset that it must presume that identified automobiles and membership services would be marketed in the normal and usual channels of trade. The Board rejected Spintek’s argument that the trade channels differed because automobiles are sold through dealerships while the Society does not sell through dealerships. The Board reasoned, once again, that because the Society was not limited to antique cars, and the Society’s aim is to “foster and preserve interest” in Pierce-Arrow vehicles, the trade channels could be the same. In any event, the Board found that consumers interested in purchasing new Pierce-Arrow vehicles would “be expected to encounter” the Society’s activities. Id. at 33-35. The TTAB then cited the various, unique trade channels employed by the Society in concluding that although the trade channels differed, the consumers of both the Society’s and Spintek’s goods overlap.
In turn, the Board quickly noted: (1) the lack of strength of the Society’s mark, citing the same reasons listed in factor two of the Section 2(a) analysis; (2) that although buying a car requires careful selection and a high level of care that even knowledgeable consumers were not immune to confusion; and (3) actual confusion in order to find a likelihood of confusion under Section 2(d). Id. at 36-38.
After considering all of the facts and factors, the TTAB concluded that the marks were highly similar and that relevant persons were likely to assume a connection or affiliation between Spintek’s PIERCE-ARROW and THE PIERCE ARROW SOCIETY. The Board reasoned that the Society's and Spintek’s consumers are related and their goods, services, and memberships would be offered to the same relevant persons. The Board further reasoned that despite the lack of strength of the Society’s mark, it was strong enough to warrant protection against a mark as similar as Spintek’s mark. Finally, the Board once again noted that even sophisticated consumers are not immune to source confusion. Id. at 39-40. The Pierce-Arrow Society v. Spintek Filtration, Inc., 2019 USPQ2d ___ (TTAB Aug. 12, 2019) [precedential]. [RB]
TTAB Holds MALAI Generic For Dessert Items Containing Malai Cream
The Trademark Trial and Appeal Board upheld an Examining Attorney’s refusal to register a mark on the Supplemental Register under Trademark Act Sections 23(c) and 45, and 15 U.S.C. §§ 1091(c) and 1127 on the grounds that the applied for mark was generic and incapable of distinguishing the Applicant’s goods. In re Twenty-Two Desserts, LLC, 2019 U.S.P.Q.2d 292782 (TTAB August 6, 2019).
Twenty-Two Desserts, LLC (“Applicant”) originally sought registration of its MALAI mark on the Principal Register on an intent to use basis for “Ice cream, gelato, diary-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops, and ice cream sundaes.” The Examining Attorney refused registration on the ground that the mark is merely descriptive of the Applicant’s goods because MALAI refers to an Indian diary ingredient that is similar to cream or butter and is a Hindi term for cream. Id. at *1.
The Applicant subsequently amended its application to allege use and to seek registration on the Supplemental Register. The Examining Attorney refused registration because MALAI is generic and incapable of distinguishing the foods associated with the mark. After the refusal was made final, Applicant appealed to the Board. Id. at *1.
A mark seeking registration on the Supplemental Register must be capable of distinguishing the applicant’s good or services. The Board applied a two-part test to determine whether the mark was generic: (1) what is the genus (class or category of goods at issue); and (2) does the relevant public understand that the designation primarily refers to the genus of the goods. Id. at *1-2.
First, the Board looked at the genus of the goods at issue. The Board, relying on the identification of the goods in the application, determined that the genus of the goods is ice cream, gelato, frozen yogurt, etc. Next, the Board examined the relevant purchasers. Here, the relevant purchasers are the public at large, namely those ordinary consumers who purchase and eat the goods at issue. Id. at *2.
Lastly, the Board undertook an analysis as to how the relevant public perceives MALAI. The Examining Attorney argued that MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially with a sweet taste.” The Examining Attorney also relied on definitions of the word malai and articles, recipes, food blogs and other material from internet sources that identified malai as a cream. Id. at *2-3.
The Board ultimately agreed with the Examining Attorney that the records showed that in English, the word malai means a specific cooking ingredient, cream. The evidence also established that malai included creamy foods that fall within the broad category of goods under which the Applicant sought registration. Lastly, the Board noted that the record contained evidence that consumers would understand the proposed mark to refer to ice cream made principally with malai and, as a result, the proposed mark is incapable of distinguishing the source of the products. Id. at *3-4.
The Board rejected all arguments made by the Applicant, including the Applicant’s argument that the Board should not rely on the doctrine of foreign equivalents. The Board noted that the Examining Attorney did not rely on the application of the doctrine to find MALAI generic. And, the word malai itself, not the translation, in English has a meaning that is understood to refer to the applied-for goods. Id. at *4-5.
In closing, the Board stated that the evidence indicates that the relevant public would understand MALAI to primarily refer to a key aspect of the goods at issue and since the term is generic, it should be freely available for all competitors to use. Id. at *5. In re Twenty-Two Desserts, LLC, 2019 U.S.P.Q.2d 292782 (TTAB August 6, 2019) [precedential]. [FM]
 For the uninitiated, The Pierce-Arrow Motor Car Company was once the de facto provider of limousines to “[e]very president of the United States from William Howard Taft through Franklin D. Roosevelt.” Id. at 8. Yet, in 1938, coinciding with a downturn in the luxury car market and The Pierce-Arrow Motor Car Company’s refusal to produce a lower-priced car, the luxury automobile manufacturer shuttered its doors. As a result, only 2,400 Pierce-Arrow automobiles remain in existence.
HOT TOPICS IN IP LAW
By: trademark law & practice committee
On July 18, 2019, the Trademark Law and Practice Committee hosted its annual half-day CLE event entitled “Hot Topics In Trademark Law” at the Princeton Club in New York City. The event was well attended by members of the Association. This year’s keynote address was given by Lesley Fair, Senior Attorney with the Federal Trade Commission’s Bureau of Consumer Protection. Ms. Fair’s keynote address covered critical issues concerning the state of the law, and related best practices, in connection with advertising claims.
After the keynote presentation, Scott Greenberg, co-chair of the NYIPLA’s Trademark Law and Practice Committee, moderated a panel discussion entitled “Trademarks In Bankruptcy: The Supreme Court Finally Speaks.” The panelists included Stuart Gordon, a bankruptcy partner at Rivkin Radler LLP, and Richard Levy, Jr., a bankruptcy partner at Pryor Cashman LLP. The panelists presented a thought provoking discussion concerning the enforceability of trademark license agreements in bankruptcy proceedings. The presentation was highlighted by the introduction, and analysis, of the Supreme Court’s recent decision in Mission Products.
The next speaker was the Honorable Mark A. Thurmon, the Deputy Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board. Judge Thurmon provided a comprehensive overview and update concerning the Trademark Trial and Appeal Board (“TTAB”). Judge Thurmon’s presentation included a discussion of important new substantive and procedural developments at the TTAB as well as updated statistics concerning cases pending before the TTAB.
Our next speaker, Stuart C. Ash, came from north of the border to discuss important changes in Canadian trademark legislation. Stuart is a partner in Gowling WLG and has over 20 years’ experience assisting clients in registering, protecting and managing their trademarks in Canada and internationally. He provided an engaging presentation providing up to the minute details on how U.S. companies can secure Canadian trademarks.
Next up was Ronald D. Coleman of Mandelbaum Salsburg, P.C., who addressed recent federal court decisions that have reached conflicting outcomes with regard to whether the validity of an incontestably registered trademark can be challenged on the ground that the subject mark was generic at the time of registration. Some courts have held that a mark that is the subject of an incontestable registration can only be challenged on genericness grounds if the mark became generic after registration, but not if the mark was allegedly generic at the time of filing. Other courts have held that incontestably registered marks can be challenged on the ground that the mark was generic at the time of filing. Ron explored and analyzed the reasoning behind these conflicting rulings.
The final panel was Tamar Niv Bessinger and Emily Weiss of Fross Zelnick Lehrman & Zissu, P.C., who covered notable ethics issues in trademark practice. Tamar and Emily’s presentation focused on ethical issues that are raised at various stages of the prosecution and maintenance of trademark applications and registrations. The panel also explored issues regarding the waiver of privilege within trademark disputes in order to place the advice of counsel into evidence.
MINUTES OF JUNE 11, 2019
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
Board Members Present:
Robert Isackson (by telephone)
John Moehringer (by telephone)
Robert Rando (by telephone)
Feikje van Rein was present from the NYIPLA executive office.
Board Members Not Present: Alicia Russo, Douglas Nemec, Irena Royzman, Marian Underweiser and Peter Thurlow were absent and excused from the meeting.
President Kathleen McCarthy called the meeting to order at 4:00 pm. She reminded the Board that it is important to timely respond to emails that are circulated that need Board approval. President. McCarthy also encouraged Board members to provide counter points so we can reach a consensus on positions that the Board takes for its members.
A motion was made to waive the reading of the minutes. The motion was approved. A motion was made to approve the minutes and it was approved.
Abigail Langsam gave the financial report. The state of the NYIPLA books are in line with other bar associations. A motion was made to approve the transfer of certain funds and it was approved.
The NYIPLA has 38 new members join from April 30 to June 11. Membership is down very slightly from last year. A motion was made to waive the reading of the new members’ names; the motion was approved and the Board approved the new members. The Board discussed efforts to increase corporate membership.
President McCarthy then asked for selected discussion from the committees:
Amicus Brief Committee: The Board discussed three recent decisions in which the courts have agreed with the proposals and arguments set forth by the NYIPLA (Mission Products v. Tempnology; Return Mail Inc. v. U.S. Postal Service; and Brammer v. Violent Hues Productions). The ABC intends to submit a brief in Iancu v. NantKwest.
Legislative Action Committee: Congress has taken a significant interest in intellectual property in the pharmaceutical arena. There are a number of bills that may have an effect on intellectual property. The LAC holds weekly telephone conferences to discuss pending legislation. The Senate is hoping to pass a drug pricing bill by early July. The NYIPLA has a short window to weigh in on these bills. The LAC Subcommittee has drafted a series of white papers to present basic issues about patent law and to set forth the implications that are likely to arise if certain proposals are adopted. The LAC has not taken a position on the bills themselves, but is instead seeking to assist Congress in understanding certain concepts and nuances about the intellectual property in patents. Board discussed various bills and concepts that are included in proposed legislation and made an action plan to prioritize certain bills.
Trademark Committee: The Half Day Program set for July 18, 2019 and will feature a variety of topics including ethics, genericness, a discussion on Mission Products and changes in the Canadian trademark law. The Trademark Committee had hoped that a representative from Amazon would be the keynote speaker but, to date, it has been unable to secure a commitment from Amazon. The Board discussed possible keynote speakers.
Other Events and Committees: The Board discussed other upcoming events, including the Second Circuit Moot Court, which will be doing a patent program this year with three patent pilot program judges. The Programs Committee has just started meeting to discuss the Full-Day CLE and is reaching out to other committees to sponsor panels. The Board discussed possible mentoring events, in addition to the joint Corporate/Young Lawyers Committee cocktail reception that is always popular. The Board discussed the possibility of a Rising 2L event, possibly reaching out to student IP journals and law school recruiting personnel to get contacts.
Other committees are starting to plan events as well – IP Transactions had a call and is preparing a checklist for diligence; Patent Litigation is planning a judge’s event in September; and President McCarthy and Mr. Rando are working on the President’s Forum. The Woman’s Committee is having an informal gathering in July and is planning two more formal events for the year, including the biosimilars event with Patent Litigation. The Trade Secrets Committee is continuing to launch its podcasts on recent topics.
New Business: Ms. van Rein noted that the NYIPLA audit will be starting next week and results will be announced at an upcoming Board meeting.
The meeting adjourned at approximately 5:20 pm.
The Board meeting was held at the Thurgood Marshall Us Courthouse, 40 Foley Square, New York, NY 10007. President Kathleen McCarthy called the meeting to order at approximately 3:45 p.m. In attendance were:
Robert Isackson (by telephone)
Douglas Nemec (by telephone)
Irena Royzman (by telephone)
Marian Underweiser (by telephone)
Gene Lee (by telephone)
Heather Schneider, Abigail Langsam, and Dyan Finguerra-DuCharme were absent and excused from the meeting. Feikje van Rein attended via telephone, joined in-person by Leandeline Tejada of the Executive Office.
The meeting was called to order by President McCarthy. The Board waived the reading of and approved the minutes of the June 11, 2019 board meeting.
Robert Rando presented the financial report on behalf of the treasurer, Abigail Langsam. Mr. Rando reported that NYIPLA is maintaining its decline in assets and that the Association has been increasingly conservative in terms of spending. President McCarthy went on to explain that losses are lower due to ACG and the new contract.
The Board then discussed and approved the new members. Kathleen McCarthy stated that she is routinely recruiting members and personally welcoming new members to the Association. The Board went on to discuss the declining membership numbers, the possibility of having firm memberships, and ways in which NYIPLA can improve its member retention.
Robert Isackson and Irena Royzman updated the Board on the activities of the Amicus Brief Committee. Further updates will follow after the Amicus Brief Committee meeting scheduled for July 11, 2019. Colman Ragan summarized the initiatives of the Legislative Action Committee and the Pharma Subcommittee. The Legislative Action Committee is currently in the process of submitting several white papers and the Pharma Subcommittee would like to recruit volunteers to assist with their workload.
Kathleen McCarthy review the Mentoring Program survey results with the Board of Directors. John Moehringer and Robert Rando volunteered to be mentors. A brief run through of upcoming programming was concluded with ideas on how to improve outreach for the Half-Day Trademark program on July 18, 2019. President McCarthy stated that she sent e-mails to colleagues and other interested parties. Colman Ragan mentioned that the Programs Committee could have worked more closely with the Trademark Committee to execute the program.
The Board briefly discussed the One-Day Patent CLE Seminar and the status of the program. The IP Transactions and Women in IP Law Committees are working collaboratively to produce a panel for the One-Day Patent CLE Seminar. Other events discussed were the: (1) Women in IP Law Happy Hour, (2) Young Lawyers Committee Happy Hour, (3) In-House Counsel Happy Hour, (4) Patent Litigation Judge’s Panel and (5) the President’s Forum.
Members of the Board deliberated ways in which the Association could expand its digital footprint. Suggestions included conducting webinars with CLE codes, offering credit for podcasts, and developing a library of digital content.
The meeting was adjourned at 5:30 pm.
The next board meeting will take place on September 17, 2019 at the Union League Club, 38 East 37th Street, New York, NY 10016.
MINUTES OF JULY 9, 2019
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
MINUTES OF SEPTEMBER 17, 2019
MEETING OF THE BOARD OF DIRECTORS OF THE
NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
Board Members Present:
Patrice Jean (until 5:30 pm)
Feikje van Rein attended on behalf of the Executive Office.
Board Members Not Present: Colman Ragan
Kathleen McCarthy brought the meeting to order and entertained a motion to waive the reading of the minutes and to approve them. The motion was approved.
Abigail Langsam provided the financial report, which is in line with other bar associations.
The NYIPLA has 33 new members from July 9, 2019 to September 17, 2019. A motion was made to waive the reading of the new members’ names; the motion was approved and the Board approved the new members. The Board discussed efforts to increase members including by engaging more with law students, encouraging Committee Chairs to recruit new members and providing programming geared towards young lawyers.
McCarthy then asked for selected discussion from the committees:
Amicus Brief Committee: The Board discussed Athena Diagnostics, Inc. v. Mayo and the impact the case may have on the health care industry. The Board approved submitting an amicus brief. The Board discussed Dex Media v. Click-to-Call Techs, which involves judicial review, an issue that the NYIPLA has briefed several times. The Board approved submitting an amicus brief; McCarthy, Underweiser and Jean were recused. Even though the Board declined to file an amicus brief in Romag Fasteners, Inc. v. Fossil, Inc., the Board praised the Trademark Committee for its hard work and diligence. Finally, Feikje van Rein reiterated the importance of timely responding to approval requests.
Legislative Action Committee: Rob Rando reported on a recent meeting concerning refining certain statutory language. The board discussed the recent hearings on the STRONGER Patents Act. The LAC is also working on some legislative ideas concerning injunctive relief. The Board discussed the white papers concerning issues pertinent to the pharmaceutical industry noting that the Pharmaceutical Subcommittee has weekly conference calls.
The Board spent significant time discussing the 2020 Judge’s dinner including creative ways in which to manage pricing for tables and attendance. A motion was made to approve new pricing and surcharges; the Board approved the motion. The Board discussed candidates for the OPS award, potential keynote speakers and the artist who will sing the national anthem.
The Board discussed its mentorship program including networking events.
The NYIPLA has created a committee to organize a gala event in 2022 celebrating the organization’s 100th year anniversary. The purpose of the gala will be to highlight the NYIPLA’s accomplishments and the benefits the organization has provided over the past century. The Board discussed creating a separate budget for the event.
The Board discussed the ESX proposal including integrating committee membership that will roll over.
The Board discussed upcoming programming from various committees.
The meeting was adjourned for the Committee Chair and Delegates Reports Meeting.
Formerly of O'Reilly IP, has joined DLA Piper as a Partner.
Formerly of Venable LLP, joined Hogan Lovells as Partners.
Has been promoted to partner at Robins Kaplan LLP.
MOVING UP & MOVING ON
Simon roberts & jason leonard
Formerly of Patterson Belknap Webb & Tyler LLP, has joined Kramer Levin Naftalis & Frankel LLP as a Partner.
Formerly of Dorsey & Whitney LLP, has joined Dentons as a Partner.
Has been promoted to principal at Fish & Richardson PC.
Formerly of Mayer Brown LLP, joined Jenner & Block LLP as a Partner.
Last First Membership Firm/Company/Law School State
Akpinar Erol Student City University of New York School of Law New York
Ashby Savannah Active 3- Kilpatrick Townsend & Stockton LLP New York
Carlos Destiny Student St. John's University School of Law New York
Cavaliere Michael Student St. John's University School of Law New York
Cohen Hallie Student Benjamin N. Cardozo School of Law New York
Franco Jorge Student University of Massachusetts School of Law Massachusetts
Goodwill Jonathan Active 3- Carlton Fields New York
Jimenez Jose Active 3+ Polsinelli PC New York
Jin Bryan Student Brooklyn Law School New York
Lott Whitney Student Cumberland School of Law Alabama
Mazzei Andreina Student Rutgers School of Law New Jersey
Mixon John Student St. John's University School of Law New York
Palacios Chezare Affiliate The Ticktin Law Group Florida
Yi Bryttni Student Brooklyn Law School New York
WELCOME NEW MEMBERS
NYIPLA Publications Committee Editorial Team
Jessica Sblendorio and Margaret Welsh
NYIPLA Executive Office
2125 Center Avenue
Fort Lee, NJ 07024